This is sort of a second part to the second to last article I wrote about inventorship. By now you know that an inventor is someone who conceives the invention but what does that really mean, and how do you show it? I don't think a lot of patent attorneys think about these questions. Most are eager to learn about the invention so it can be easy to lose the sight of making sure that other parts of the application are accurate and thoroughly investigated. But it is important to understand what an inventor is and what qualifies as conception of an invention. And if you don't think it's that important, your licensee, assignee, or your investor certainly will. So without further delay, let's dive in.
Conception is generally defined as a definite formation of an invention in an inventor's mind.Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). This means that conception is not just some fleeting thought or something that briefly came across your mind for a moment in time. If you have a definite formation of an invention, that means that you have to be able to clearly describe to someone what your invention is, and how one would reduce it to practice and use it. Gunter v. Stream,573 F.2d 77, 197 USPQ 482 (CCPA 1978).
Here are some examples of what a conception is and isn't, based on case law.
- Inventor actually made the invention. Invitrogen, Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1064, 77 USPQ2d 1161, 1169 (Fed. Cir. 2005).
- (FOR CHEMICALS) Inventor has both the idea of the chemical structure and has the method of making that chemical. Oka v. Youssefyeh, 849 F.2d 581, 7 USPQ2d 1169 (Fed. Cir. 1988).
- Inventor grows a new variety of asexually reproduced plant and recognizes as a new variety. Dunn v. Ragin,50 USPQ 472, 475 (Bd. Pat. Inter. 1941).
- Inventor accidentally made an invention and didn't know it at first but later was the first person to recognize what constituted as the invention. Silvestri v. Grant, 496 F.2d 593, 596, 181 USPQ 706, 708 (CCPA 1974).
- Inventor’s “hope” that a genetically altered yeast would produce antigen particles. Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001).
- Inventor describes a new chemical but does not know how to produce it.
Another thing that I would like to mention is that conception is not the same thing as enablement (which means how a person having ordinary skill in the art would make and use the invention). Enablement issues fall more into written description requirement territory rather than inventorship.