U.S. patentdefn laws allow for co-inventorship. Section 16 of the Patent Act provides that ``[w]hen an inventiondefn is made by two or more persons jointly, they shall apply for patent jointly . . . 35 U.S.C. Sec. 116. Because ``[c]onception is the touchstone of inventorship,`` each joint inventor must generally contribute to the conception of the invention. See Burroughs Wellcome Co. v. Barr Lab., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994) (HTML).

Inventors may apply for a patent jointly even though

they did not physically work together or at the same time,

each did not make the same type or amount of contribution (as added by the 1984 amendments to Section 116 of the Patent code., Patent Law Amendments Act of 1984, P.L. 98-622, 98 Stat. 3383 (Nov. 8, 1984)); or

each did not make a contribution to the subject matter of every claim of the patent. A contribution to even just one claim has been deemed to be enough to qualify as a co-inventor. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 888 (Fed. Cir. 1988)

Joint inventorship connotes collaboration of efforts to produce a complete and operative invention. Garrett Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl. 1970). Thus, one who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor. Id.

A general rule of inventorship is that where ``two persons are totally unaware of each other`s work, there can be no joint inventorship.`` Ex parte Hardee, 223 USPQ 1122, 1123 (Comm`r Pat. 1984). However, inventors can be considered joint inventors for the same invention if each conceived and reduced the invention to practice during separate and non-overlapping periods of time. Credle v. Bond, 25 F.3d 1566, 20 USPQ 2d 1911 (Fed. Cir. 1994)

Patent Rights Created Under Co-Inventorship

The Courts have noted that an invention presumptively belongs to its creator. See Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403, 406 (Fed. Cir. 1996) (HTML). Thus, in the context of joint inventorship, each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions. See Ethicon, 135 F. 3d at 1465. Several provisions of the Patent Act combine to dictate this rule. 35 U.S.C. § 116, as amended in 1984, states that a joint inventor need not make a contribution ``to the subject matter of every claim of the patent.`` In amending section 116 as to joint inventorship, Congress did not make corresponding modifications as to joint ownership. For example, section 261 continues to provide that ``patents shall have the attributes of personal property.`` This provision suggests that property rights, including ownership, attach to patents as a whole, not individual claims. Id. Moreover, section 262 continues to speak of ``joint owners of a patent,`` not joint owners of a claim. Thus, a joint inventor as to even one claim enjoys a presumption of ownership in the entire patent.

Additionally, where inventors choose to cooperate in the inventive process, their joint inventions may become joint property without some express agreement to the contrary. Id. at 1466. Thus, one co-inventor must effectively share ownership of all claims in the patent, even those invented solely by one of the co-inventors of the patent. This gives one co-inventor the power to license rights in the entire patent. Id. This power does not require permission or acquiescence by the other co-inventor.

Section 262 of the Patent Act explicitly states that:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

This freedom to exploit the patent without a duty to account to other co- owners also allows co-owners to freely license others to exploit the patent without the consent of other co-owners. See Schering Corp. & Roussel-Uclaf S.A. v. Zeneca, Inc., 104 F.3d 341, 344 (Fed. Cir. 1997) (HTML) (``Each co-owner`s ownership rights carry with them the right to license others, a right that also does not require the consent of any other co-owner.``). Thus, the congressional policy expressed by section 262 is that patent co-owners are ``at the mercy of each other.`` See Willingham v. Lawton, 555 F.2d 1340, 1344 (6th Cir. 1977).

In addition, as a matter of substantive patent law, all co-owners must ordinarily consent to join as plaintiffs in an infringement suit. See Ethicon, 135 F. 3d at 1468. Consequently, as seen in Ethicon, ``one co-owner has the right to impede the other co-owner`s ability to sue infringers by refusing to voluntarily join in such a suit.``

Correction of Inventorship

U.S. patent law provides the ability to correct inventorship after the patent application is filed and is pending or after a patent is subsequently granted. Correction of inventorship includes correcting for including a person who was not an inventor, or for failing to add a person who was an inventor. The third paragraph of 35 U.S.C. § 116 allows for correction of inventorship as follows:

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, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly, under such terms as he prescribes

Furthermore, 35 U.S.C. § 256 provides that a co-inventor omitted from an issued patent may be added to the patent by a court ``before which . . . [the] matter is called in question.`` See Ethicon Inc., v. United States Surgical Co., 135 F. 3d 1456, 1461 (Fed. Cir. 1998) (HTML).

Similarly, the third paragraph of 35 U.S.C. § 256 allows for correction of inventorship in an issued U.S. patent.

Simple errors in determining the identity of all of the inventors can be readily corrected, and does not comprise inequitable conduct . In contrast, a willful decision not to include a true inventor on the application (or to add a false inventor) does comprise inequitable conduct, and cannot be corrected. In institutional inventions, such decisions may arise with respect to improper assertions of the involvement of senior faculty, assertions regarding the lack of involvement of junior researchers and non-degreed technicians, and the failure to name inventors that may be affiliated with other institutions.

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