Are You an Inventor?

For purposes of obtaining a patent, the inventor is the original owner of an invention. Being an “inventor” for patent purposes is a two-step process:

Conception

Conception of an invention occurs when the inventor imagines it so completely that all that is left to do is build and test it. In the words of one court: “Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” (Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed.Cir. 1994).)

Giving someone suggestions, advice, or ideas is not enough to be an inventor. Nor does building and testing an invention conceived by another, or filing for a patent, make you an inventor. Conceiving all or part of the invention is what matters.

EXAMPLE: On November 10, 1877, after thinking about the problem of recording speech for several months, Thomas Edison sketched a drawing of a lathlike device with a hand crank that turned a large, grooved cylinder wrapped in tinfoil mounted on a long shaft. At this moment, Edison’s conception of the phonograph was complete. He completely imagined it so that all that was left to do was to reduce it to practice (see below).

Reduction to Practice

Conceiving an invention is a necessary first step in obtaining original patent ownership, but it is not sufficient by itself. In addition to conceiving the invention, the inventor must reduce it to practice. “Reduction to practice” occurs when the inventor:

• builds and tests the invention, or
• files a regular or provisional patent application

You can’t conceive an invention and just keep the idea in your head. To obtain patent ownership, you must actually make the invention or file a regular or provisional patent application. 

EXAMPLE: Edison gave his drawing of the first phonograph to a machinist to build and the machinist constructed the device from the drawing. Edison and his assistants then tested it for the first time: To everyone’s amazement, it worked. The age of sound recording was born. Moreover, by building and testing his invention, Edison had reduced it to practice—this, combined with his conception, made Edison the inventor of the phonograph and entitled him to ownership rights to any patent that resulted from his invention.

Although you must do the conceiving of your invention yourself, you need not reduce it to practice yourself. You can hire others to build and test it or file a patent application on your behalf; or, if there is more than one inventor, a co-inventor can do it for you.

What if you’re not an inventor?

If you don’t qualify as an inventor, you can’t be the original owner of an invention. But you can obtain ownership from the inventor if:

• you acquire ownership though an assignment, or
• someone who works for you as an employee or independent contractor creates an invention, or
• you are part owner of a business entity that owns an invention.

Inventor Is Original Owner

Inventorship and ownership of an invention are not the same thing. The inventor is the original owner of an invention. The inventor must be listed as such on any patent application filed with the PTO. This is so even though the inventor no longer owns the patent rights in the invention—which is usually the case with employee-inventors.

As the original owner, the inventor has the right to use, make and sell the invention. But the vast majority of inventors are unable to retain these rights because employers and others acquire ownership from them. The people or companies who acquire ownership are not inventors; but, as invention owners, they—not the inventor—have the legal right to make, use or sell the invention.

For assistance with the preparation and filing of a provisional patent application, see Nolo’s Online Provisional Patent Application.

Portions of this article are derived from What Every Inventor Needs to Know About Business & Taxes by Attorney Stephen Fishman.