The right to obtain a patent initially belongs to the inventor.1 When a patent application is filed it is important to designate the proper inventor of the subject matter claimed. A patent can name a single inventor, or it can name two or more joint inventors.2 It is typically in the latter case that questions arise regarding who should or should not receive credit.
An inventor is anyone who participated in the mental act of conceiving the invention.3 If two people work together on a project and both contribute to a patentable idea, both can be named on the application as joint inventors. This is true whether the specific contribution of each is difficult to identify, as may be the case when an idea arises from collaborative brainstorming,4 or whether the contribution of each inventor is a discrete component of the whole.
1See 35 U.S.C. §§ 111, 115-16; Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248
(Fed. Cir. 1993).
2 Where there is more than one inventor, each inventor, absent an agreement to the contrary,
owns “a pro rata undivided interest in the entire patent, no matter what their respective con-
tributions.” Ethicon, Inc. v United States Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir.
1998). This is true even if an inventor contributed to the subject matter of only one claim in
a patent having many claims. Id. at 1466.
3See Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994)
(“Conception is the touchstone of inventorship, the completion of the mental part of inven-
tion.”); Sewell v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994).
4See Canon Computer Sys., Inc. v. Nu-Kote Inťl, Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1998)
(“As any member of a large discussion group well knows, it is often difficult to remember
who first said what.”).