For Inventors: Authorship vs. Inventorship
Authorship
“Authorship” and “inventorship” are not synonomous. Authorship is defined as “the quality or state of being an author,” as well as “source; origin.” To determine authorship on a paper or article, one merely needs to examine the finished product and acknowledge all who contributed to the creation of the article or paper. Thus, authorship will include the researchers who conducted the subject study, of course. It will also include anyone who contributed algorithms, equations, or figures used during the research. The list of authors might also include the person responsible for committing the research to paper in article form, a kindly mentor who suggested a comparative approach, and a philanthropist who funded the research in the first place.
Inventorship
“Inventorship,” on the other hand, is a much more precise legal term. It is, obviously, the quality or state of being an inventor, but what differentiates an inventor from an author? The American Heritage Dictionary defines an “inventor” as someone who has produced or contrived (something previously unknown) by the use of ingenuity or imagination.
The United States Patent and Trademark Office (USPTO) defines an inventor as someone “who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor….”
Thus, the issue of inventorship hinges upon the legal definition of “conceived” and “conception.” Fortunately, the USPTO comes to the rescue once again by providing definitions taken from the case law surrounding this very issue. “Conception” is defined as “the complete performance of the mental part of the inventive act….” (Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930).) “Conception” also means providing a description of the invention thorough enough to allow someone skilled in the art to reproduce the invention without “exercise of the inventive faculty.” (Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978).) For a more detailed treatment of inventorship, follow this link. For a more detailed treatment of conception, follow this link.
An author is someone who contributes to the final product, but an inventor is someone who participates in the inventive step. An author might imagine an outcome or a solution, but an inventor shows the steps and mechanisms necessary to get there.
It is extremely important to get inventorship right on a patent application. Honest mistakes may be emended, but willful misrepresentation (naming an inventor who didn't contribute to the conception of the invention, or failing to name someone who did contribute to the conception of the invention) could lead to serious difficulties with intellectual property rights in the future—up to and including the total invalidation of the patent. Ultimately, the question of who is an inventor is best decided by a qualified patent attorney.
Disclosure Forms
Invention Disclosure Form
A document that embodies the date of conception of, a complete description of, and all potential contributors to an invention being disclosed to the University of Rochester.
Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable work being disclosed to the University of Rochester.
Software Copyright Disclosure Form
A document that embodies the date of creation of, a complete description of, and all potential contributors to a copyrightable computer soft-ware program being dis-closed to the University of Rochester.