Preface
This brief note is not legal advice and is for educational purposes only.
Discussion
So you want to file a patent application and one of the questions is the name of the inventor(s). So, who’s an inventor? Like most of law the answer is “it depends”. So here we go toward answering that question.
If you are a solo inventor and did not use anyone else to help you in any way then you are the inventor (obvious I know).
Utility patent
You alone came up with the idea/concept and only used one or more people to “reduce to practice” your invention, then you are the inventor UNLESS the one or more people came up with an idea and you try and patent it, as it’s their idea. Can you get around this? Yes, by having a work for hire, or an agreement with the worker(s) assigning all patent rights to you. Then you and they are the inventors and you retain all the patent rights.
For example, let’s suppose you have an idea for a circuit that will flash lights based on time and sounds. You decide to not make it yourself, however you sketch out a flow chart on how it should work. You hire an engineer to “reduce it to practice”. The engineer does. You are the inventor. (Although best practices is to make it a work for hire with any assigned rights to you.)
To restate it, because it’s important, the “inventor” is the person(s) that conceive of the invention, that is, the original idea or concept, not the individual(s) who physically build or test it. Conception involves a clear and complete mental picture of the invention, including how it will function. Reduction to practice, through physical creation or a patent application, builds upon that conception. And an inventor should be able to point to a patent claim and say I conceived of that.
Design patent
Now let’s suppose you’re filing a Design Patent application in which the ornamental design is disclosed. Again, if you draw the designs without a person’s assistance, you’re the inventor. However, suppose you have the visual concept for an ornamental design and have someone else craft the drawings. Perhaps not as clear cut since the design is the drawings. The key for the inventor is the design must have some ornamental aspect that the inventor conceived of. For example, you have an idea for a hat that can have a peak when pulled up, and that flattens and extends all around when pushed down. That is the drawing or specimens should represent the design rather than be the invention. (Again, best practices is to make it a work for hire with any assigned rights to you.)
Plant patent (see MPEP Chapter 1600 Plant Patents)
The inventor here has a 2 step process that of: 1) discovery, and 2) asexual reproduction. The inventor(s) must not only identify the unique plant but also reproduce it through methods like grafting, budding, or tissue culture, rather than through seeds. The reproduction process must ensure that the plant retains its unique characteristics. Again, reduction to practice is distinct from invention and again best practice is to make any reduction to practice under a legal agreement assigning any rights to you.
Conclusion
As always, please consult with an attorney before you start your project.
