Examples - Joint Inventorship

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Although they never met one another, Thomas and Benjamin collaborated over the Internet in conceiving their invention. Each was aware of the other's work and each appreciated the contribution of the other. They are joint inventors of the invention.

Hypothetical Example No. 2. Nikola makes a discovery in his laboratory and discloses it to his employer. Even though she is unaware of Nikola's work, Amelia makes a related discovery and discloses it to the same employer. Their employer decides to file one U.S. patent application on both inventions in their names. The USPTO does not allow claims to the inventions in the same application because Nikola and Amelia did not collaborate and are not joint inventors.

Hypothetical Example No. 3. Abraham, a graduate student working on his own, makes a discovery and tells his professor, John, about it. John discloses the invention to his technology manager who in turn discloses the invention to John's research sponsor. Abraham and John authorize a U.S patent application to be filed in their names with an intent to deceive the USPTO as to who the true inventor is. The patent issues in error and is assigned to their employer, the university, and the error is not discovered until the university tries to sue an infringer. Because John was not a true inventor, the patent is invalidated by the court.

Case Law. The following examples from U.S. case law teach this concept:

Credle v. Bond, 25 F.3d 1566, 30 USPQ2d 1911 (Fed. Cir. 1994)
Hardee, In re, 223 USPQ 1122 (Comm'r Pat. 1984)
Garrett Corp. v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. Cl.), cert. denied, 400 U.S. 951, 167 USPQ 705 (1970)
Kimberly-Clark Corp. v. Proctor & Gamble Distrib. Co., 973 F.2d 911, 23 USPQ2d 1921 (Fed. Cir. 1992)
Monsanto v. Kamp, 269 F. Supp. 818, 154 USPQ 259 (D.D.C. 1967)
University of Cal. V. Synbiotics Corp., 29 USPQ2d 1463 (S.D. Cal. 1993)

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