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Inventorship

There is no single method or test of determining and identifying who is an inventor.

"Inventor" is defined in patent law as the person or persons who conceived the patent invention.  Conception is the touchstone for the determination of the inventorship. To be considered as an inventor, an individual must contribute to a definite and permanent idea of the complete and operative invention.  Conception is complete only when the idea is so clearly defined in the inventor's mind that one of ordinary skill in the art would be able to reduce it to practice without extensive research or experimentation.

Accordingly, a person who merely discovers a problem that requires a solution is not considered an inventor, even if identification of the problem is quite difficult and requires inventive genius, unless the identification is accompanied by some contribution to the solution of the discovered problem.  There must be participation in the solution to be considered as an inventor.  One does not become an inventor by suggesting a desired end or result, without specific means of accomplishing the result. One is also not an inventor for merely following the instructions of others, or performing routine acts.

The exercise of ordinary skill by a person in developing something is generally insufficient to warrant the status of inventor.  Thus, a person who exercises ordinary skill in implementing the instructions of another is not typically considered a joint inventor.  On the other hand, an inventor need not personally undertake all the steps necessary to complete the invention to be an inventor. In a Federal case (Sewall v. Walters), Walters gave strict instructions and design to Sewall without any latitude or discretion to make any functional changes to the design.  Sewall dutifully followed the instructions without changing or adding any thing, as the instructions were very strict.  Essentially, Sewall was a pair of hands working at the direction of Walters.  The Federal Circuit held that Sewall's contributions did not amount to the level or status of inventorship.

However, (section 116 sets) there is no set explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor.  Rather, a joint invention is simply the product of collaboration between two or more persons working together to solve the problem addressed.  The determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case.  A joint inventor need not solely conceive of the entire invention, for this would obviate the concept of joint inventorship.  However, a joint inventor must contribute in some significant manner to the conception of the invention.  Nevertheless, a person is not precluded from being a joint inventor simply because his or her contribution to a collaborative effort is experimental. 

One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of claimed combination, as a whole does not qualify as a joint inventor.  The contributor of any claim element is a joint inventor as to that claim, unless one asserting sole inventorship can show that the contribution of the means contributed by another was simply a reduction to practice of the sole inventor's broader concept.  Furthermore, a co-inventor need not make a contribution to every claim of the patent.  A contribution to a single claim is enough.  Thus, the critical question for joint invetorship (joint conception) is subject matter of the claims at issue.

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Digital House Calls
Researchers in Switzerland reported cell phones with built-in digital cameras could be used to help diagnose and suggest treatment for some serious wounds in patients in remote locations far removed from a physician.  The report from University Hospital of Geneva looked at leg ulcers in 52 patients that were examined both in person and remotely by doctors in a nearby room who had only pictures of the same wounds taken by a first-generation camera phone and found remarkably high agreement between doctors who looked at the wound in person and those who saw the image.

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Viagra
Animal tests have indicated the sexual performance drug used by millions of men can improve memory and movement by helping injured brains develop new cells and blood vessels, researchers said. Researchers at the Johns Hopkins University School of Medicine reported in January that Viagra blocked and even reversed some of the heart enlargement in mice with blood pressure stress. Plans are under way for a trial to determine if similar results occur in humans.

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