The distinction between these two standings is subtle but very important. The discussion below will hopefully help JHU researchers not only understand the distinction but also help them navigate the transition from author to inventor and the requirements for co-inventorship as well.

The recognition of hard work for most research scientists (apart from further funding) is authorship on a scientific publication. Increasingly however, if research results in novel, useful and unobvious discoveries, scientists also may seek commercial recognition and disclose their invention to their licensing offices in order to protect the intellectual property with patents.

The basic difference between inventorship and authorship is that inventorship is legally defined and authorship is subjectively decided. Authors are added to research publications sometimes out of professional courtesy or deference with no fear of invalidation of the science presented. If the inventors listed on a patent are not correct, or left off, the patent can be deemed invalid; a very serious consequence resulting in loss of intellectual property rights.

A patent application is made up of distinct elements. The specification section describes the invention, how to make it and its use, drawings (if necessary), DNA or protein sequences (if necessary) and an oath identifying the authors. The specification includes the asset of the patent: the claims that serve the patent by "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention".

When does an author qualify as an inventor? An inventor is someone who contributes to the conception of the invention. Someone who merely reduces the invention to practice or only makes a financial contribution is by law not an inventor. That is, if a person (for example, a lab technician) demonstrated that the invention actually works or carries out the tests which reduced it to practice, without making a contribution to the conception of the invention, then he or she is not an inventor. However, such a person would usually be included as an author on a research paper resulting from the work, along with all the other people who contributed to the work.

In the US only human beings (not funding agencies or private sponsors) can be inventors. A funding agency or university may have rights to the ownership of a patent as an assignee, but they cannot be named as an inventor on a patent.

So how do you know if someone is a co-inventor? Inventorship is determined on a claim by claim basis and each co-inventor does not have to contribute to all the claims. For instance, if an invention has 20 different claims and one inventor only contributes to one of those claims, then he or she is still a co-inventor. In addition, just as with scientific publications, inventors do not need to work together physically and the invention may result from collaboration with researchers at different institutions.

The significance of the order of the names listed on research articles and patents also differ. The order of the author's names in a scientific publication usually reflects their respective contributions, with the first author making the major contribution. This assignment can often be a political process as the paper will usually be recognized to by the lead author's name in the future. Likewise, a patent will often be referred to by the person who is named first on the patent, giving the impression of greatest contribution. However, although the name of the first inventor may indeed be the 'lead' inventor or reflect a political standing, the order of the inventors on a patent application has no legal consequences and all named inventors are co-inventors with equal rights.

What happens if the list of inventors on a patent application is indeed incorrect? This can be remedied as the inventor names can be changed when reviewed by the Patent and Trademark Office (USPTO) during prosecution, or even after a patent is granted, as long as the error was made unknowingly and without deceptive intent.

In fact, the list of inventors can and often does change during patent prosecution if the claims of the patent application need to be amended. For example, if you are a co-inventor who only contributed to one of the claims in the patent application and that claim has to be removed in order to make the invention patentable, then you are no longer an inventor. However, correcting inventorship costs money so attention must be paid to this issue early on.

As translational research is more and more protected by patents, it is good to know and understand upfront the nuances between authorship and inventorship so that expectations can be managed when intellectual property is actually created.

For more information please contact:
Martin Devenport, PhD
Technology Transfer Intern
Licensing and Technology Development
Johns Hopkins University
410 516-4566
mdevenp1@jhmi.edu