Joint inventorship can be a thorny issue and getting it wrong can result in a patent being invalidated. Contrary to what you might expect, it is not that hard to get inventorship wrong. The inventorship mistake often happens for the simple reason that a patent attorney must rely on inventors to accurately describe their contributions to an invention. This can easily be complicated when patents have multiple contributors.
Some inventors want all the credit and are good at describing the invention. Other inventors have no interest in talking about their work or are less involved with the registration process so it’s easy to overlook their contributions. Other inventors may want to give their boss or business owner credit for being an inventor because they think it’s good for their career. Whatever the reason behind it may be, if an inventor is wrongly included or wrongly excluded it can end up causing significant problems later if the patent is litigated. This means it is important to get inventorship right when the patent application is filed, as correcting inventorship later can be very difficult.
Patent attorneys often follow a simple rule to determine inventorship: if someone contributed an idea that ends up being an element of a patent claim (which is the part of a patent that describes a property fence around an inventive idea), that person is an inventor. Most of the time, that simple rule works well enough.
Recently, however, the simple rule wasn’t enough. But the mistake was not made by the patent attorney. According to the Federal Circuit Court of Appeals, the mistake was made by the district court judge who determined that someone who was not listed as an inventor actually should have been an inventor. On appeal, the Federal Circuit overturned the district court judge’s ruling and determined that the contribution of the newly added inventor was “insignificant in quality” because the contribution was mentioned only once in the patent. Apparently, the quality of an inventive contribution can now be measured by the quantity of words used to describe the contribution. But that’s a topic for another discussion…
You can read the Federal Circuit’s opinion here: https://cafc.uscourts.gov/opinions-orders/22-1696.OPINION.5-2-2023_2120058.pdf. The case is HIP, Inc. v. Hormel Foods Corp., Case No. 22-1696 (Fed. Cir. May 2, 2023).
The more complete version of the inventorship rule goes like this: An inventor must have “(1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) [done] more than merely explain to the real inventors well-known concepts and/or the current state of the art.” It’s called the Pannu test, from the case that clarified the rule. Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
For more information:
An analysis of the Federal Circuit’s opinion in HIP, Inc. v. Hormel Foods Corp. can be found here:
A general discussion of the legal criteria for inventorship can be found here:
https://www.finnegan.com/en/insights/blogs/prosecution-first/it-all-starts-with-inventorship.html
Clyde Findley is Special Counsel and a registered patent attorney in the Intellectual Property practice at Berenzweig Leonard. He can be reached at cfindley@berenzweiglaw.com.