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ARTICLE · 08 FEBRUARY 2021

It All Starts With Inventorship

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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"Whoever invents or discovers . . . ." That's how 35 U.S.C. §101 kicks off U.S. patent law. Inventing involves three stages: (1) conception, (2) activities leading toward a reduction to practice...

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Amanda Murphy
Amanda Murphy
Adriana Burgy
Adriana Burgy
Stacy Lewis
Stacy Lewis
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"Whoever invents or discovers . . . ." That's how 35 U.S.C. §101 kicks off U.S. patent law. Inventing involves three stages: (1) conception, (2) activities leading toward a reduction to practice, and (3) reduction to practice (either actual or constructive). While an inventor or someone acting under an inventor's direction can perform the second and third stages (Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002)), only an inventor can complete the first stage, conception.

"The threshold question in determining inventorship is who conceived of the invention." Mueller Brass Co. v. Reading Indus., 352 F. Supp 1357(E.D. Pa 1972).

Unless a person participates in that first stage of conceiving of the invention, that person does not qualify as an inventor. In re Hardee, 223 U.S.P.Q. 1122, 1123 (Comm'r Pat. 1984).

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