Whether Easy or Complicated, Inventorship Determination Should be a Part of the Patent Drafting Process

For many patent practitioners, drafting a patent application based on an invention disclosure is one of the skills learned during the formative years of practice. It often involves repeated discussions with inventors regarding the scope, focus and overall concept of the invention to be described. What may not be a focus, however, is a full discussion of the contributions of those involved in the disclosure to determine whether they should be listed as inventors of the patent application. A recent decision by the United States Court of Appeals for the Federal Circuit (Federal Circuit) highlights the importance of these discussions, even though they may be difficult or unpleasant to conduct.

The case, In re VerHoef, concerns the appeal of an Examiner’s rejection under 35 U.S.C. § 102(f), asserting that the sole inventor named in U.S. Patent Application No. 13/328,201 (the ‘201 application) did not invent the subject matter sought to be patented.¹ While rarely encountered, the statutory provision 35 U.S.C. § 102(f), clearly provides a mechanism for an Examiner to reject a patent application for improper inventorship, when the facts so indicate.² In In re VerHoef, the Examiner rejected the ‘201 application, directed to a dog mobility device, for failure to name the proper inventors, based on his knowledge of a prior-filed application in which both VerHoef and another inventor, Lamb, were named as joint inventors.³ In response to the rejection, VerHoef submitted an affidavit describing the conception of the invention claimed in the ‘201 application. In this affidavit, VerHoef set forth the interactions between himself and Dr. Lamb, a veterinary professional, that ultimately led to the development of the claimed dog mobility device.⁴ These interactions included a statement that Dr. Lamb “contributed to the idea of the figure eight loop,” an element and essential feature of the claimed invention. .⁵ Based on this affidavit, the Federal Circuit determined that “Lamb, not VerHoef, contributed the idea of the claimed figure eight loop” and thus, the Examiner’s rejection under 35 U.S.C. § 102(f) was affirmed, as Lamb should have been listed as a joint inventor. ⁶

In their discussion, the Federal Circuit noted that determining inventorship, particularly join inventorship, is “one of the muddiest concepts of the metaphysics of patent law,” while at the same time the process “is nothing more that determining who conceived the subject matter at issue.” ⁷ The end conclusion, however, is that a valid patent requires correct inventorship.

What In re VerHoef emphasizes is that inventorship determination can often be glossed over during the patent drafting process. Instead, it should be one of the points of emphasis during the initial stages of the discussions with the potential inventors. While parsing out each and every contribution of all persons involved in the disclosure process may be a complex and time consuming (and potentially contentious), at minimum practitioners should ask questions to elicit whether all potential inventors contributed to the conception of at least one element that is “not insignificant in quality, when measured against the dimensions of the full invention.”⁸ Including this practice in a disclosure interview process will help ensure that inventorship questions are hopefully addressed and determined at an early stage, rather than when a patent is challenged in the courts.