by Dennis Crouch
Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.* Conception is typically referred to as a mental act. The MPEP, for example, includes a statement in all-caps that “CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR.” MPEP 2138.04(I). The basic rule is that the inventor must have a “definite and permanent idea of the complete and operable invention.”
The mind-of-the-inventor doctrines have several problems, today I’m thinking about one relating to joint inventorship. As far as I know, the definitional cases regarding conception refer to “the inventor” as if inventorship is a solo process. But 75% of new patents list two or more inventors who are unlikely to have experienced joint or simultaneous conception. It turns out though that simultaneous conception is not required. Rather, this is how it works.
- Multiple human people provide significant contributions toward a complete invention;
- At some point, one of the individuals puts on the pieces together in a manner sufficient to be called conception.
- Although only one person conceived, all of the contributors receive credit for the conception as joint inventors, even if they never understood the full invention.
This setup played out in the Federal Circuit’s 2020 Dana-Farber decision, and the court confirmed that two Harvard researchers who contributed early on in the invention process deserved to be listed as co-inventors with Kyoto University’s Dr. Honjo even though it was Honjo who actually conceived of the invention. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020), cert. denied sub nom. Ono Pharm. Co., Ltd. v. Dana-Farber Cancer Inst., 20-1258, 2021 WL 2044661 (U.S. May 24, 2021)
In practice, the invention is defined and shaped by the patent prosecution process, and so my easy linear process above is often only something that can be seen retrospectively once we understand the actual scope of the claimed invention.
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* Above, I referred to conception as the key invention marker. Of course, the law of invention states that the invention is not complete until the invention is reduced-to-practice (either actually or constructively). Reduction-to-practice takes the idea and verifies that it actually works in practice. I think that RTP gets short shrift in the patent system, but the law is clear that a joint inventor’s contribution may be at that post-conception stage. As Judge Lourie explained in Pannu v. Iolab Corp.:
All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
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Painting above is a portion of The Immaculate Conception by Giovanni Battista Tiepolo (1696–1770).