Who is considered an inventor on a patent
Only individuals who helped conceive of the subject matter claimed in the patent application are considered inventors. Individuals who have made other contributions, such as gathering essential data or constructing a practical embodiment of the invention, are not inventors unless they also helped conceive of the claimed invention. Similarly, a project supervisor is not entitled to inventor status simply because of his or her supervisory role; helping to conceive of the claimed invention is the singular criterion. The claims of the patent application legally determine who is and who is not an inventor. The patent claims should be used as a guideline for determining inventorship. For this reason, inventorship can change during prosecution of the patent application, as the claims are amended. Accurately identifying all the inventor(s) is a prerequisite for a valid U.S. patent.
Authorship vs. inventorship
Authorship on a scientific publication is not the same as inventorship. Authorship and inventorship have different criteria; simply being an author on a publication does not necessarily qualify an individual as an inventor. An inventor must have helped conceive of the claimed subject matter in the patent application.
Order of inventors
The order of the inventors listed on a patent has no legal significance, nor does it have any relationship to the individuals’ contribution to the invention. However, the first named inventor on a patent may be how the patent is referred to when referencing the patent. For example, a patent with inventors Adams, Brown, and Chan may be referred to as the “Adams” patent because of the first name in the list.
Obligations of inventor on patent
According to the UW Intellectual Property Policy, employees and students are required to do everything reasonably required to assist the UW in obtaining, protecting, and maintaining patent or other proprietary rights. This generally includes being available for a disclosure meeting to discuss your invention, reviewing a draft of the patent application, and responding to questions as they arise during patent drafting and prosecution. UW employees that disclose an innovation to UW CoMotion (see Submit an Innovation) will formally assign their rights to the innovation to the UW via signing an assignment document. Each inventor is also required to sign an assignment document for submission with the patent application.
Record keeping
Until March 16, 2013, the U.S. has a “first to invent” patent system. That is, if two or more patent applications are filed for the same invention, any patent on that invention is awarded to the applicant who can show the earliest date of invention. Proof of invention must be in the form of documentary evidence, and the best form of this evidence is a laboratory notebook. The purpose of a lab notebook is to document how and when inventions occur, and to show what steps are taken and by whom. A lack of documentation can result in the loss of patent rights if the date of an invention is challenged, or if the inclusion or exclusion of a particular inventor is disputed. For these reasons, the UW CoMotion advises researchers to develop good record keeping practices.
A lab notebook should include a description of the research problem and the solutions or hypotheses under consideration. It is particularly important to record the conception of any idea that may be new, such as an important scientific breakthrough. Conception occurs when an inventor has a complete idea of a solution to a problem. The concept should be fully described in the lab notebook, in sufficient detail such that someone of ordinary skill in your field could understand the concept. Lab notebooks should also contain experimental results and data that support your solutions or hypotheses. Each entry in the lab notebook should be complete, dated, and signed by an investigator and a witness. In addition, the title of the research project, the name of each investigator, and information about relevant funding sources should be documented on the first page of the lab notebook. For more information, watch Guide to Keeping a Lab Notebook, a 2-minute tutorial featuring former CoMotion Director of IP Management Jesse Kindra.