Filling out the inventor list in the Application Data Sheet (ADS) is more than a clerical task—it can determine ownership of your patent rights. If not handled properly, it can turn into a high-stakes legal dispute. When you identify inventors, you are effectively defining who owns the intellectual property. If that ownership is unclear, the entire patent can be at risk.
Here is a practical step-by-step approach to determining the inventor list while protecting your company from future issues:
1. Start with the Legal Standard: Good Faith
U.S. patent law requires a good faith determination of who actually invented the technology. You cannot simply list executives or omit contributors for convenience. Incorrect inventorship—whether by adding or excluding someone—can jeopardize the patent.
2. Cast a Wide Net First
Before narrowing anything down, start by listing everyone who had any involvement with the project:
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Employees and engineers
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Consultants and freelancers
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Third-party manufacturers and their personnel
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Anyone involved in brainstorming
A note specifically on Chinese manufacturers: if your product involves a Chinese manufacturer making design or engineering decisions — not just following instructions, but contributing ideas about how to execute your unique features — those employees are coinventors under U.S. law. This matters because Chinese manufacturers often push back on invention assignment agreements with talk of “long-term relationships” and “trust.” That goodwill disappears the moment a dispute arises. And if a key contributor later becomes unreachable, you may not be able to correct the inventorship record at all. The Federal Circuit’s April 2026 ruling in Fortress Iron v. Digger Specialties shows exactly what happens: two commercial patents were invalidated because one Chinese engineer could not be found. Here is what you must do before work begins.
This initial “over-inclusive” approach helps ensure no contributions are overlooked and reduces the risk of later disputes.
3. Narrow the List: Inventor vs. Scribe
Next, refine the list by distinguishing between true inventors and those who only executed instructions.
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Inventor: Someone who contributed to the conception of the invention—i.e., provided a technical idea that ends up in the claims.
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Scribe: Someone who helped implement the invention using routine skill (e.g., building, coding, drafting) but did not contribute to the underlying idea.
If a person contributed a meaningful idea, they stay. If they simply followed directions, they are not an inventor.
4. Identify the Real Risk: Missing Assignments
Once your list is finalized, ask a critical question:
Do you have a signed assignment agreement from every person involved?
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Inventors: Without an assignment, they own their portion of the patent rights—even if you paid them.
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Scribes: Even if they likely aren’t inventors, they could later claim they were. Without a signed agreement, that claim can create real problems.
If a manufacturer or contractor is on your inventor list without a signed assignment, address that now — before you file. For a practical guide on how manufacturers end up as silent co-owners of your product’s IP, and what to do about it before it becomes a crisis, see: How to prevent your manufacturer from stealing your idea.
5. The Costly “Scribe Defense”
If a dispute arises, you can argue that a person was merely a scribe and not an inventor. You may even win. But proving that requires litigation—and patent litigation is extremely expensive. Relying on this defense is a last resort.
6. Why Problems Surface Later
Early on, when there is no revenue, disputes are unlikely. But once the product becomes successful, the incentives change. Former collaborators may assert ownership claims, especially if they can find contingency counsel willing to take a percentage of the outcome. Success attracts scrutiny.
7. The Best Protection: Get Agreements in Place Early
The most effective solution is simple: ensure that everyone involved signs an agreement assigning their rights before work begins or before filing.
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If agreements are in place: you are protected.
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If not: address it immediately. It is far less costly to secure assignments now than to resolve disputes later.
Bottom Line
Do not treat the ADS as a formality. Use it as an opportunity to audit ownership. If any name on your list—whether inventor or contributor—does not have a signed assignment, pause and fix the issue before filing.
If you are preparing to file a patent—or want to make sure your inventor list and ownership structure are set up correctly before you file—please give me a call at (949) 433-0900. It is much easier to fix these issues now than to deal with them later.