An inventor is any person who contributes to the conception of the invention. A scribe or an investor is not an inventor.
Who is an inventor?
MPEP 2109 (II) explains that an inventor is the individual who conceived the invention, while the person (i.e., a scribe) who built the prototype is irrelevant in this discussion.
The inventor is not necessarily the big picture person or visionary of the bunch. They are the ones who designed how to make and use the product. For example, an engineer who designed a piece of software or a product is an inventor.
On the other hand, the person who actually built the product might not be the inventor. For example, the draftsperson who drew up how the product would look is not an inventor. This person is merely a scribe. They did what the inventor told them to do.
Who isn’t an inventor?
A scribe isn’t an inventor. They are, for example, the draftsperson who puts the drawings in a CAD format.
An investor isn’t an inventor either. Sometimes, start-ups want to put the investor on the inventor list to give them ownership of the invention. That solves nothing and may invalidate the patent. The solution to this is to start a corporation, assign the invention to the corporation, and give ownership to the founders through the corporate shares.
A department manager may not be an inventor but in many instances, they are put on the inventor list. Engineers and scientists want to put their names on the inventor list as well because it builds their resumes.
Purpose of determining inventorship
Inventorship is important because you need to list all of the inventors on your patent application. If you fail to do so, then the patent could be invalidated later on during litigation. Also, inventors who were left off of the patent application may still have invention rights. That would be a serious problem.
Problems with getting inventorship wrong
The biggest pitfall regarding ownership arises when some inventors don’t have a duty to assign their inventions to the start-up or company. In this case, that person can sell their invention rights to others or even file their own application.
This isn’t much of an issue for companies because all of the employees are most likely already under a duty to assign their invention to the company.
However, let’s say a start-up did not require all of the inventors (e.g., developers, founders, etc.) to sign an invention assignment agreement. We would take a closer look at whom the inventors are and whether they needed to be asked to sign the Invention Assignment Agreement. The concern is that they won’t sign or will ask for an unreasonable amount of compensation to assign their invention rights.
If you failed to name an inventor or put someone on the list of inventors who shouldn’t be on it, the patent office has procedures to correct inventorship. The specific form you need to fill out is PTO/AIA/40.