data/2100/s2109.01.html.txt

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# 2109.01 Joint Inventorship [R-10.2019]



#### *35 U.S.C. 116   
 Inventors.*


*[Editor Note: Applicable to proceedings commenced on or after Sept. 16, 2012.
 See **[35 U.S.C. 116
 (pre‑AIA)](mpep-9015-appx-l.html#d0e302886)** for the law otherwise applicable.]*


* (a) JOINT INVENTIONS.—When an invention is made by two
 or more persons jointly, they shall apply for patent jointly and each make the
 required oath, except as otherwise provided in this title. Inventors may apply for
 a patent jointly even though (1) they did not physically work together or at the
 same time, (2) each did not make the same type or amount of contribution, or (3)
 each did not make a contribution to the subject matter of every claim of the
 patent.
* (b) OMITTED INVENTOR.—If a joint inventor refuses to join in
 an application for patent or cannot be found or reached after diligent effort, the
 application may be made by the other inventor on behalf of himself and the omitted
 inventor. The Director, on proof of the pertinent facts and after such notice to
 the omitted inventor as he prescribes, may grant a patent to the inventor making
 the application, subject to the same rights which the omitted inventor would have
 had if he had been joined. The omitted inventor may subsequently join in the
 application.
* (c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through
 error a person is named in an application for patent as the inventor, or through
 an error an inventor is not named in an application, the Director may permit the
 application to be amended accordingly, under such terms as he prescribes.




#### *35 U.S.C. 116 (pre‑AIA)  
 Inventors.*


*[Editor Note: **Not applicable** to proceedings commenced on or after
 September 16, 2012. See **[35 U.S.C. 116](mpep-9015-appx-l.html#d0e302886912)** for the law
 otherwise applicable.]*


When an invention is made by two or more persons jointly, they
 shall apply for patent jointly and each make the required oath, except as otherwise
 provided in this title. Inventors may apply for a patent jointly even though (1) they
 did not physically work together or at the same time, (2) each did not make the same
 type or amount of contribution, or (3) each did not make a contribution to the subject
 matter of every claim of the patent.
 


If a joint inventor refuses to join in an application for patent or
 cannot be found or reached after diligent effort, the application may be made by the
 other inventor on behalf of himself and the omitted inventor. The Director, on proof of
 the pertinent facts and after such notice to the omitted inventor as he prescribes, may
 grant a patent to the inventor making the application, subject to the same rights which
 the omitted inventor would have had if he had been joined. The omitted inventor may
 subsequently join in the application.
 


Whenever through error a person is named in an application for
 patent as the inventor, or through an error an inventor is not named in an application,
 and such error arose without any deceptive intention on his part, the Director may
 permit the application to be amended accordingly, under such terms as he prescribes.
 



A person who shares in the conception of a claimed
 invention is a joint inventor of that invention. *In re VerHoef,* 888 F.3d
 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018)(person who contributed the idea of a
 figure eight loop in the claimed dog harness, which figure eight loop is an essential
 feature of the invention not insignificant in quality or well-known in the art, should have
 been named as a joint inventor). 
 


"Inventors may apply for a patent jointly even though (1) they did not
 physically work together or at the same time, (2) each did not make the same type or amount
 of contribution, or (3) each did not make a contribution to the subject matter of every
 claim of the patent." **[35
 U.S.C. 116](mpep-9015-appx-l.html#d0e302886)**. 
 


It is not necessary that joint inventors physically work
 together on a project, and it is permissible for one inventor to "take a step at one time,
 the other an approach at different times." (*Monsanto Co. v. Kamp,* 269 F.
 Supp. 818, 824, 154 USPQ 259, 262 (D.D.C. 1967)). However, "the statute neither states nor
 implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever
 and are completely unaware of each other's work." What is required is some "quantum of
 collaboration or connection." In other words, "[f]or persons to be joint inventors under
 **[Section
 116](mpep-9015-appx-l.html#d0e302886)**, there must be some element of joint behavior, such as
 collaboration or working under common direction, one inventor seeing a relevant report and
 building upon it or hearing another’s suggestion at a meeting." *Kimberly-Clark
 Corp.**v.**Procter & Gamble Distrib. Co.,* 973 F.2d 911, 916-17, 23 USPQ2d 1921,
 1925-26 (Fed. Cir. 1992); *Moler v. Purdy,* 131 USPQ 276, 279 (Bd. Pat.
 Inter. 1960) ("it is not necessary that the inventive concept come to both [joint
 inventors] at the same time").
 


While each joint inventor must generally contribute to the
 conception of the invention, each joint inventor does not have to "make the same type or
 amount of contribution" to the invention. "The fact that each of the inventors play a
 different role and that the contribution of one may not be as great as that of another does
 not detract from the fact that the invention is joint, if each makes some original
 contribution, though partial, to the final solution of the problem." *Monsanto Co.
 v. Kamp,* 269 F. Supp. at 824, 154 USPQ at 262. 
 


A joint inventor or coinventor need not make a contribution
 to every claim of a patent; a contribution to one claim is enough. "The contributor of any
 disclosed means of a means-plus-function claim element is a joint inventor as to that
 claim, unless one asserting sole inventorship can show that the contribution of that means
 was simply a reduction to practice of the sole inventor’s broader concept."
 *Ethicon Inc. v. United States Surgical Corp.,* 135 F.3d 1456, 1460-63,
 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998) (The electronics technician who contributed to
 one of the two alternative structures in the specification to define "the means for
 detaining" in a claim limitation was held to be a joint inventor.). In addition, there is
 no requirement that all the inventors be joint inventors of the subject matter of any one
 claim.
 


See **[MPEP § 602.09](s602.html#ch600_d1ff6a_1ba4a_ff)** regarding inquiries about
 the inventorship of each claimed invention and regarding correction of inventorship when an
 application is amended such that one (or more) of the named joint inventors is no longer a
 joint inventor of the subject matter of any claim remaining in the application. See
 **[MPEP §
 602.01(c)](s602.html#d0e4830ss602)***et seq.* for additional information pertaining to the correction of
 inventorship.
 


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