Authorship v. Inventorship

“Authorship” and “inventorship” are not synonymous. Authorship is defined as “the quality or state of being an author,” as well as “source; origin.” To determine authorship on a paper, one examines the finished product and acknowledges all who contributed to its creation. Thus, authorship will include the researchers who conducted the subject study. It may also include individuals who contributed algorithms, equations, or figures used during the research, as well as the person who committed the research to paper or the mentor who suggested a comparative approach.

Inventorship, on the other hand, is a precise legal term. What differentiates an inventor from an author? An author is someone who contributes to the final product, but an inventor is someone who participates in the inventive step. An author might imagine an outcome or a solution, but an inventor shows the steps and mechanisms necessary to get there.

The American Heritage Dictionary defines an inventor as someone who has produced or contrived (something previously unknown) by the use of ingenuity or imagination. The U.S. Patent and Trademark Office (USPTO) defines an inventor as someone “who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor . . . .” Thus, the issue of inventorship hinges on the legal definition of “conception.” Fortunately, the USPTO provides clarity taken from case law surrounding this issue. Conception is defined as “the complete performance of the mental part of the inventive act” (Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 [CCPA 1930]). Conception also means providing a description of the invention thorough enough to allow someone skilled in the art to reproduce the invention without “exercise of the inventive faculty” (Gunter v. Stream, 573 F.2d 77, 197 U5PQ482 [CCPA 1978]).

It is extremely important to get inventorship right on a patent application. Honest mistakes may be amended, but willful misrepresentation (naming an inventor who didn’t contribute to the conception of the invention or failing to name someone who did contribute) can lead to serious difficulties with IP rights—up to and including invalidation of the patent. Ultimately, the question of who is an inventor is best decided by a patent attorney.