2109.01 Joint Inventorship [R-07.2022]
35 U.S.C. 116 Inventors.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012. See 35 U.S.C. 116 (pre‑AIA) for the law otherwise applicable.]
- (a) JOINT INVENTIONS.—When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
- (b) OMITTED INVENTOR.—If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
- (c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
35 U.S.C. 116 (pre‑AIA) Inventors.
[Editor Note: Not applicable to proceedings commenced on or after September 16, 2012. See 35 U.S.C. 116 for the law otherwise applicable.]
When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.
Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
A person who shares in the conception of a claimed invention is a joint inventor of that invention. In re VerHoef, 888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018) (person who contributed the idea of a figure eight loop in the claimed dog harness, which figure eight loop is an essential feature of the invention not insignificant in quality or well-known in the art, should have been named as a joint inventor).
“Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. 116.
It is not necessary that joint inventors physically work together on a project, and it is permissible for one inventor to “take a step at one time, the other an approach at different times.” (Monsanto Co. v. Kamp, 269 F. Supp. 818, 824, 154 USPQ 259, 262 (D.D.C. 1967)). However, “the statute neither states nor implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other's work.” What is required is some “quantum of collaboration or connection.” In other words, “[f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.” Kimberly-Clark Corp.v.Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960) (“it is not necessary that the inventive concept come to both [joint inventors] at the same time”).
While each joint inventor must generally contribute to the conception of the invention, each joint inventor does not have to "make the same type or amount of contribution" to the invention. "The fact that each of the inventors play a different role and that the contribution of one may not be as great as that of another does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.” Monsanto Co. v. Kamp, 269 F. Supp. at 824, 154 USPQ at 262. When a joint inventor contributed to the conception of an invention, publication of the joint inventor’s contribution before the date of conception of the total invention does not necessarily defeat joint inventorship of that invention. See Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371-73, 2020 USPQ2d 10775 (Fed. Cir. 2020) (“a collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception. Inventorship of a complex invention may depend on partial contributions to conception over time, and there is no principled reason to discount genuine contributions made by collaborators because portions of that work were published prior to conception for the benefit of the public.”).
A joint inventor or coinventor need not make a contribution to every claim of a patent; a contribution to one claim is enough. “The contributor of any disclosed means of a means-plus-function claim element is a joint inventor as to that claim, unless one asserting sole inventorship can show that the contribution of that means was simply a reduction to practice of the sole inventor’s broader concept.” Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998) (The electronics technician who contributed to one of the two alternative structures in the specification to define “the means for detaining” in a claim limitation was held to be a joint inventor.). In addition, there is no requirement that all the inventors be joint inventors of the subject matter of any one claim.
See MPEP § 602.09 regarding inquiries about the inventorship of each claimed invention and regarding correction of inventorship when an application is amended such that one (or more) of the named joint inventors is no longer a joint inventor of the subject matter of any claim remaining in the application. See MPEP § 602.01(c)et seq. for additional information pertaining to the correction of inventorship.
