35 U.S.C. · Part II · Chapter 11, Application for patent

35 U.S.C. 116: Inventors

In plain English

When two or more people make an invention together, they apply jointly. Section 116(a) makes clear that joint inventors do not have to have worked together physically or at the same time, made the same type or amount of contribution, or contributed to every claim. A person who contributed to the conception of at least one claim is an inventor of the application.

Section 116(b) handles a joint inventor who refuses to join the application or cannot be found after diligent effort: the other inventors can apply on behalf of themselves and the omitted inventor, who keeps the same rights and can join later. Section 116(c) lets the USPTO correct the application when someone was named in error or an inventor was left out. Correction of an issued patent is handled under section 256.

Inventorship is a legal question about conception: who formed a definite and permanent idea of the complete invention as claimed. Someone who supplied only a goal, ran routine experiments under direction, or explained what was already well known is not an inventor. Being an author on a related paper, a manager of the project or the owner of the invention does not make someone an inventor either.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

AIA and pre-AIA

The AIA removed the old requirement that an inventorship error have arisen “without any deceptive intention” before it could be corrected, for applications and patents involved in proceedings commenced on or after September 16, 2012.

Text of 35 U.S.C. 116

Current text, quoted from the official United States Code.

(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 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.

Key cases

Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). A joint inventor must contribute in some significant manner to the conception or reduction to practice, make a contribution that is not insignificant in quality measured against the full invention, and do more than explain well-known concepts or the current state of the art.

Practical notes

Inventorship follows the claims, so it can change during prosecution. If an amendment cancels the only claims a person contributed to, that person should be removed; if new claims draw on someone else's contribution, they should be added. Recheck the inventor list at allowance.

Inventorship decides ownership. Each inventor owns an undivided interest unless they have assigned it, and under section 262 any joint owner may make, use and sell the invention, or license it, without the consent of the others. Get assignments from every inventor early, especially from contractors and university collaborators.

To correct inventorship in a pending application, file a request under 37 CFR 1.48 with an application data sheet naming the correct inventors and the processing fee. In an issued patent, the route is a request under section 256 and 37 CFR 1.324. Deliberately naming the wrong inventors is a different matter and can raise inequitable conduct issues.

Related rules and guidance

37 CFR: § 1.41, § 1.45, § 1.48, § 1.110
MPEP: 602, 2109, 2157