By Aisha O. Otori

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Individuals frequently generate ideas of significant societal impact, yet many remain unaware of their status as inventors according to U.S. Patent Law. This article will discuss when individuals may rightfully assert inventorship for their innovations.

Defining the U.S. Patent Inventor. 35 USC §100(f) defines the term “inventor” as the individual who discovered the subject matter of the invention. Stated plainly, an inventor is anyone who conceives the invention. Inventorship is determined on a claim-by-claim basis. If another person or group of individuals contribute substantially to at least one claim in the patent application, they are recognized as joint inventors. Note that a person who suggests an idea of a result to be accomplished rather than the means of achieving such results is not a joint inventor. Moreover, there is no requirement that co-inventors contribute equally to the invention. All that is required is that each co-inventor contributes to the invention’s conception. Joint inventors jointly own the entire patent.

Inventorship v. Ownership. Often, inventor(s) are under contractual obligation to assign their invention to an employer. However, despite an employer’s ownership interest in the invention, they are precluded from listing themselves as inventors in a U.S. patent application. The employer must apply for the patent in the names of the true inventors.

Implication of Incorrect Patent Inventorship. There is a requirement for an oath or declaration to incorporate a statement attesting that the individual executing the oath or declaration holds the belief that he or she is the original inventor or joint inventor of the claimed invention. Willful false statements made in the oath or declaration are punishable by fine or imprisonment of not more than five (5) years, or both.

Correcting Inventorship. Where an error regarding inventorship has been made on a patent application, it can be corrected. The requisite action correcting inventorship will depend on the nature of application and the level at which the error is detected. To correct the error, it may be necessary to file a new oath or declaration and pay a fee.

Recent “Inventorship” Debate. With the increasing prevalence of Artificial Intelligence (AI), there is a debate regarding the circumstances under which AI may qualify as an inventor. The USPTO has held that AI cannot be named as an inventor on U.S. patent applications. On February 13, 2024, the USPTO published its Inventorship Guidance for AI-Assisted Inventionswhich states that AI assisted inventions are not categorically unpatentable so long as the inventor or joint inventor has made significant contributions to conception of the invention. The debate is on-going. On June 6, 2024, the USPTO published another notice stating that the USPTO will be reopening the public comment period for the development of inventorship guidance surrounding inventions developed by AI systems.

Importance of seeking legal counsel. Determining inventorship can be very technical based on the scope and interpretation of the claims. Occasionally, disputes may arise regarding the inclusion of individuals as inventors in a patent application. Other times, during the patent review process, a US patent examiner may issue rejections prompting the need to cancel claims from the patent application which may alter inventorship. It is beneficial to have a legal professional knowledgeable in the field to manage the process.

© Coleman & Horowitt, LLP, 2024

About the Author:

Fresno IP Attorney Aisha O. Otori

Aisha O. Otori is licensed before the USPTO. She is an associate in the Intellectual Property department of the firm and works in the Fresno and Los Angeles offices. Aisha represents clients in patent prosecution and enforcement, trademark, tradename, trade dress and copyright applications and enforcement before the Trademark Trial and Appeal Board (“TTAB”) as well as litigation in state and federal courts. She received her undergraduate (B.S. Chemical Engineering) and law degrees from Tulane University and an L.L.M. from University of Illinois Chicago School of Law in intellectual property and international business and trade law (with a Certificate in International Corporate & Finance Law) as well as a law degree from Nigerian Law School (Abuja Campus). She is licensed in California, Illinois, and Nigeria. Aisha is a member of the Fresno County Bar Association, Association of Business Trial Lawyers (“ABTL”), and the Los Angeles Intellectual Property Law Association (“LAIPLA”).

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Established in 1994, Coleman & Horowitt, LLP is a state-wide law firm focused on delivering responsive and value- driven service and preventive law. The Firm represents businesses and their owners in matters involving transactions, litigation, agriculture & environmental regulation and litigation, intellectual property, real estate, estate planning and probate. Attorneys at the firm also serve as mediators, arbitrators, and discovery referees.

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