Dynamic Inventorship

Laura Pedraza-Fariña

Inventors and their inventions are the building blocks of patent law: There simply is no patent law without inventors who seek to patent their inventions. One might think that a concept as foundational as inventorship would be both well-settled and extensively argued in legal opinions. But that is not the case. In fact, understanding who counts as an inventor and what constitutes an invention has surprisingly flown below the radar both in patent law scholarship and judicial opinions. In her article, The Inventorship Fallacy, Amy Motomura helps us with a deeply-researched and carefully-parsed analysis of the myriad and often contradictory ways in which courts have defined the “inventor” and the “invention.”

Motomura’s article makes a number of important contributions to the literature. First, it sheds light on the inventorship doctrine’s hidden role in policing the boundaries of related patent filings (what she calls the “indirect” role of inventorship). It then provides a taxonomy for how to think about who counts as an inventor, disaggregating the concept into three strands: manner, timing and substance. Ultimately, her inquiry into how courts define the “substance” of inventorship—that is, what a participant must contribute to become a true inventor—leads her to a second key descriptive contribution: defining who counts as an inventor requires defining what counts as an invention for inventorship purposes. This task, in turn, has no clear doctrinal answer. Rather, the Federal Circuit has implicitly articulated three mutually exclusive understandings of the invention as reflected in (1) the full scope of the claims; (2) only the novel and nonobvious elements of the claims; or (3) only the “not-well-known” or “not publicly accessible” elements of the claims.

Normatively, there are multiple ways to understand “the invention,” ways that go beyond what is perhaps the most traditional approach of seeing the invention as coterminous with the claims. The article closes by considering how these multiple conceptions of “the invention” address inventorship’s direct and indirect functions. They are an uneasy fit. No single definition of “the invention” can successfully fulfill both the direct and indirect functions of the inventorship doctrine, in large part because inventorship turns out to be a dynamic, “temporally unstable,” (P. 2453) concept. Inventors must be named early in patent prosecution, but all existing theories of inventorship subject inventorship to change, either through new information about the content of the prior art or through changes in claim construction.

Given Motomura’s diagnosis, the pressing question becomes: what next? Professor Motomura leaves a normative solution for another article—emphasizing that the doctrinal ambiguities and failures she has unearthed make the case for reform but provide no answers for how that reform should proceed.

In the next few paragraphs, I consider three avenues for future research that the Article opens up: (1) A deeper analysis of the relationship between inventorship’s indirect functions and the structure of patent law; (2) How do actual inventive communities decide whom to name as an inventor? How do these naming conventions overlap with conventions around scientific authorship? (Understanding the actual, on-the-ground naming practices of innovator communities might give us a grounded way to reconstruct what inventorship should normatively look like.) And, finally, (3) Given inventorship’s temporal instability, should the PTO adopt the “broadest reasonable inventive unit”– in a manner akin to its approach to claim construction during prosecution?

Inventorship’s Indirect Functions and the Privileging of Stable Inventive Entities
Professor Motomura highlights how inventorship structures the relationship among related patents. First, inventors matter for continuation practice because to claim priority to an earlier-filed application, the later application must have at least one inventor in common with the earlier one. Second, if two patent applications are filed by the same inventive entity (that is, if they share identical inventorship), the earlier-filed application will not count as prior art vis-à-vis the second one so long as it is filed within a year of the earlier-filed application becoming publicly available. Third, if two patents are sufficiently related and have identical ownership, obviousness-type double patenting will allow both to issue so long as their patent terms expire at the same time (through the filing of a terminal disclaimer).

Taken together, these three rules (and in particular the last two) give significant preference to stable inventive teams. In other words, an inventive team is allowed to obtain what in effect amounts to broader patent rights both by avoiding having to show later-filed patents are both novel and nonobvious over earlier ones, and through obviousness-type double patenting. In an earlier piece, Professor Motomura engaged with the justifications for these “own-prior-art” exceptions.¹ She reasoned that own-prior-art exceptions exist because innovation does not occur in discrete, fully formed jumps; rather, inventive entities make continuous, often incremental innovation.²

Nevertheless, by tying own-prior-art exceptions to the stability of an inventive entity, patent law appears to have created a prospect-like right that enables a single inventive entity to build broad patent estates incrementally. If this perspective is correct, the indirect functions of inventorship not only structure the relationship among patents but reveal a latent “prospect” feature of the patent system that concentrates patent ownership and management into the inventive entity’s hands.

On-the-ground Inventorship Norms
Professor Motomura recognizes the dynamic nature of inventorship and closes her article by asking:

“Are applicants naming inventors based on their subjective view of what is patentable? Their view of what is not well known? The full language of the claims? Given the doctrinal ambiguity . . . applicants are surely inconsistent in their approaches to naming inventors.” (P. 2472.)

These questions are ripe for on-the-ground investigation. A rich literature in scientific authorship norms provides a promising starting point. For example, in The Collective Author, Peter Galison details the complex set of authorship norms that emerged in the community of physicists at the Stanford Linear Accelerator Center project, and which aimed to balance both unity in the creative team and individual attribution.³ And Mario Biagioli has written about how, in scientific communities, authorship seeks to both assign credit and responsibility for a particular set of results.⁴ Interestingly, one scientific journal used the word “substantial contribution” to police who should be added as an author on a scientific paper, a standard that is somewhat reminiscent of the Federal Circuit’s requirement that an inventor’s contribution be “not insignificant in quality.” (P. 2444.) Conversely, critics of this approach have called for listing as a “contributor” to a scientific work each person who has “added usefully to the work”—a more inclusive approach.⁵ Perhaps current debates about scientific authorship mirror latent conceptions of inventorship in patent opinions. And these debates, as well as the on-the-ground practices of scientific communities, may help inform who ultimately should count as an inventor.

The Broadest Reasonable Inventive Unit?
Finally, the dynamic nature of inventorship may counsel a precautionary approach of sorts. The PTO could take the position that, during patent litigation, when important extrinsic facts about inventorship are not yet known, the relevant unit of analysis will be a capacious “broadest reasonable inventive unit”—mimicking the PTO’s approach to claim construction. This approach would have the virtue of sidestepping disagreements among different theories of inventorship. On the other hand, it may prove too inclusive: allowing tenuous claims to inventorship from individuals who did not contribute to the invention’s point of novelty, and undermining patent law’s incentive and attribution functions.

1. Amy Motomura, Innovation and Own Prior Art, 72 Hastings L. J. 565, 570 (2021) (“The Patent Act has been amended over time to include provisions giving limited preferential treatment to original patent applicants [that] allows the original applicant to patent otherwise unpatentable innovation.”).
2. Id.
3. Peter Galison, The Collective Author, in Scientific Authorship: Credit and Intellectual Property in Science 325-53 (Mario Biagioli & Peter Galison, eds., 2003).
4. Mario Biagioli, Rights or Rewards? Changing Frameworks of Scientific Authorship, in Scientific Authorship: Credit and Intellectual Property in Science 253, 262 (Mario Biagioli & Peter Galison, eds., 2003).
5. Id. at 265.