How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

9.1 CONCEIVING AN INVENTIVE IDEA

It is important to clarify the definition of conception, because an inventor must have conceived the idea for at least some part of the invention. U.S. courts have consistently held that reducing an invention to practice is not enough, and an inventor must have meaningfully (patentably) contributed to the idea upon which the invention is based. In a 1930 case, the Court of Customs and Patent Appeals referred to conception as “the complete performance of the mental part of the inventive act” and the formation of a “definite and permanent idea” of the complete invention. This means that the inventor must have a strong sense of what the invention is and how it will work. When determining if one is an inventor, we must look at whether the idea was sufficiently specific that one skilled in the art could reproduce it.

A few examples may help to clarify who qualifies as an inventor. Say that the vice president of a food company recognizes that the company needs a newly designed tea bag. He discusses this with the research director, who suggests an electrospun nanofiber tea bag. The research director, in turn, discusses this work with the research engineer, who identifies the specific nanofiber for electrospinning, comes up with a specific glue to assemble the tea bag, and develops the general engineering line plus specifications. The research engineer gives the project to a sub-engineer to implement the process. In this example, the only inventor is the ...