The Legal Ramifications of Inventorship: What You Need To Know

There is the old adage in business: to go fast, go alone; and to go far, go together.  When this applies to innovation and naming co-inventors in your patent application, it is important to understand the legal ramification of inventorship.

On May 02, 2023, the Federal Circuit issued a decision in HIP Inc. v. Hormel Foods Corp., clarifying the three-part inventorship determination under Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998).  In this case, an employee of HIP sought to be added as a co-inventor to U.S. Patent No. 9,980,498 (“the ‘498 Patent”), owned by Hormel Foods.  If successful, HIP would acquire an ownership interest in the ‘498 Patent.

The ‘498 Patent relates to a method of making precooked bacon, with a primary focus on using microwave pre-heating techniques.  The HIP employee, when consulting with Hormel Foods, proposed using an infrared heating technique.

Under Pannu, an individual is added as a joint inventor on a U.S. patent when that individual: (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.

In the Hormel Foods decision, the Federal Circuit examined the second part of the test.

The court, in reviewing the ‘498 Patent, found the limited mentioning of infra-red heating to be insignificant when compared with the primary and prominent disclosure of preheating using microwave ovens.  The Federal Circuit determined that even though Claim 5 listed “infra-red heating” as one type of heating technique, the quality of the HIP employee’s contribution was insignificant and thus not entitled to be added as a co-inventor.

There are several key take-aways from this decision.

• When an inventorship issue arises, it can be helpful to walk each party through the three-part Pannu test and have each party delineate his or her contribution to the claims of the patent application.
• Uncertainty about an inventor’s contribution being “not insignificant” can be best ascertained at the drafting stage by understanding the scope of the prior art, the inventive contribution relative to the overall scope of the invention and tying the patent claims to the breadth and focus of the specification.
• When all co-inventors are within the same company, it is essential to timely acquire and file assignment paperwork so that the patent application is properly owned by the company, independent of inventorship concerns.
• If the invention is a joint development or relies on consultation with third parties, the patent application itself can be drafted to emphasize the significant or insignificance of claim elements, therefore a clear understanding of each person’s inventive contribution at the draft stage can eliminate inventorship issues.