The (Continued) Importance of Naming the Correct Inventors on U.S. Patent Applications
In our experience, many clients are under the impression that the naming of inventors on a patent application is discretionary and that they can simply select whom they wish to name. We have seen situations where, for internal political reasons, someone wants to name or omit inventors.
The listing of inventors on a U.S. patent application is not a discretionary act. You must name those – and only those—individuals who contributed to the conception and/or reduction to practice of at least one claim in the patent application. In the latter case, those who are simply acting at the instruction of others to build prototypes or conduct testing would likely not qualify. Also, those who simply contribute knowledge about the state of the art or well-known concepts would not qualify.
It is arguably an open issue as to whether improper inventorship remains a basis for invalidating a U.S. patent. Before the America Invents Act went into force in 2012, the Patent Statute included a specific provision (35 USC 102(f)) that provided for patent invalidation based on the improper naming of inventors. Although that section has been removed, some district courts have relied on a different part of the statute (35 USC 100) to conclude that improper inventorship remains a basis for invalidating a patent. Until the Federal Circuit Court of Appeals or the Supreme Court concludes otherwise, the safest approach is to name only those who actually invented at least one claim in the application.
The test for inventorship is somewhat murky and difficult to apply. It is a good idea to discuss the contributions of the involved individuals with patent counsel. Some clients make this a formal process before filing their applications.