Is There Discrimination in U.S. Patents?

I recently attended a round-table focused on possible discrimination in the naming of inventors on patents. Congress is also holding hearings on this topic. It occurs to me that patent attorneys need to be very careful on how we interview potential inventors. I believe that if patent attorneys conduct inventorship interviews properly the question of discrimination in U.S Patents will become moot.

The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor. One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). See also Board of Education ex rel. Board of Trustees of Florida State Univ. v. American Bioscience Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 1259 (Fed. Cir. 2003).

Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers. Fritsch v. Lin, 21 USPQ2d 1737, 1739 (Bd. Pat. App. & Inter. 1991).

The patent attorney writes the claims on which the invention is based and it is the patent attorney who determines who is an inventor. It therefore becomes very important for the patent attorney to interview all potential inventors in a way that allows them to speak freely about their contribution to the invention as well as the contributions of others on their team.

Below are some suggestions that I believe, if put in place, will reduce the chance of discrimination in U.S. Patents:

1. Provide each person you intend to interview as a potential inventor a copy of the claims;
2. Interview each person individually either in your office or over the phone, a new employee may be worried about their job and afraid to speak openly;
3. Let the person know what they say will not be discussed with any other person on the team or their supervisor;
4. Explain the importance of getting inventorship correct (a patent can be invalidated if the inventorship is incorrect);
5. Explain the idea of conception in an invention;
6. Ask the person what they did to contribute to each of the claims; and
7. Ask them who else (inside or outside the company) they think I should be speaking with about the invention.

I have found that following these steps helped me identify individuals outside and inside the company who may have been too timid to discuss their contribution to the conception of the invention.