How does the presence of additional authors affect an inventor’s declaration of attribution?
When a prior art disclosure includes additional authors besides the inventor or joint inventor named in a patent application, it can complicate the process of attributing the disclosure to the inventor. However, the MPEP provides guidance on handling such situations:
“Where the authorship of the prior art disclosure includes the inventor or a joint inventor named in the application, an unequivocal statement from the inventor or a joint inventor that the inventor or joint inventor (or some combination of named inventors) invented the subject matter of the disclosure, accompanied by a reasonable explanation of the presence of additional authors, may be acceptable in the absence of evidence to the contrary.”
Key points to consider:
- The inventor or joint inventor must make an unequivocal statement of inventorship.
- A reasonable explanation for the presence of additional authors must be provided.
- The explanation should clarify the roles of the additional authors and why they were included in the disclosure.
- The statement and explanation are evaluated in the context of any contrary evidence.
For example, an inventor might explain that additional authors were graduate students assisting with experiments but not contributing to the conception of the invention. The sufficiency of such explanations is assessed on a case-by-case basis.
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