Definition of inventorship
To qualify as an inventor, a person must have participated in the conception of the invention as defined by the patent claims.
What is conception?
Conception requires the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, such that a person of ordinary skill in the art could make and use the invention without undue experimentation.
What is joint inventorship?
Joint inventorship occurs when multiple inventors participate in the conception of the complete and operative invention. Each inventor’s participation must also be material to the claimed invention (i.e., it relates to what makes the invention patentable, such as novelty or non-obviousness).
For more information, please consult with a UW CoMotion Innovation Manager or Patent Portfolio Manager.
Many people are involved in the development of an invention, but not all involvement rises to the legal standard of inventorship.
An inventor is NOT:
- Someone whose contributions were limited to known techniques and established knowledge (even if these contributions were substantial)*
- A technician who performs experiments or assembles the invention under the direction of another (“pair of hands in the lab”)
- A person who only identifies the problem or desired result without specifying how to achieve the solution
- A person who provides confirmatory data, tests the invention, or explains why the invention works from a scientific standpoint
*Exception: A person may qualify as an inventor if they suggested an improvement that is included in a patent claim
Positions and titles DO NOT automatically make someone an inventor.
Examples include, but are not limited to:
- Supervisory or administrative roles (such as principal investigators, advisors, mentors, or lab owners)
- Funding sponsors or sources
- Collaborators and suppliers who do not participate in conception
- Authors on publications
- Courtesy or honorary participants
- General participants or assistants
Inventorship is determined solely by involvement in the conception of the invention as defined by the patent claims, regardless of rank, title, or funding role.
Other important inventorship considerations
Incorrect inventorship can result in a patent being invalidated. A patent shall be deemed legally invalid and unenforceable when it names more or less than all of the correct inventors. Proper determination of inventorship is essential to protecting patent rights.
Each listed inventor on a U.S. patent application is required by U.S. law to sign a declaration stating that he/she is an original inventor or original joint inventor, based on a good faith determination.
The order of the inventors listed on a patent has no legal significance and does not reflect the relative role of each inventor. However, patents are often informally referred to by the name of the first listed inventor (e.g., the “Adams patent”).
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:
- Providing all the materials (such as text, figures, prior publications/presentations by the inventors) necessary for preparing a patent application on time
- Participating in meetings and discussions with UW counsel
- Reviewing drafts of the patent application
- Responding to questions as they arise during patent drafting and prosecution.
In addition to their obligation to assign their rights to the innovation to UW, each inventor is also required to sign an assignment document for submission with the patent application. For more information, please visit our Ownership page or consult with a UW CoMotion Innovation Manager.
Legal Disclaimer: the above information is provided for educational purposes only and does not constitute legal advice. For more information, please consult with a UW CoMotion Innovation Manager or Patent Portfolio Manager.