Under U.S. patent law, a design patent must identify the true inventor of the subject design. However, it is not always abundantly clear who should be named as an inventor, and who is merely assisting an inventor. Design patents may be obtained by [w]hoever invents any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171 (1994). While inventorship is a question of law, it is based on underlying facts. When determining inventorship, it is imperative to ask: which individual or individuals “conceived” of the claimed invention? That is, who conceived the arrangement of elements of the ornamental subject matter represented in the figures of the design patent. Safco Products Co. v. Welcom Products, Inc., 799 F. Supp. 2d 967 (2011). As there are often many people working to bring the subject matter of a design patent to fruition, this determination is not always so simple. Read on to learn how to identify an inventor, and those merely assisting.
When a group of individuals work in concert to conceive a new and original ornamental design for an article of manufacture, each individual must generally contribute to conception of a permanent and definite idea of the ornamental design to be considered a joint inventor. Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). An idea of a design is sufficiently definite and permanent when only ordinary skill would be necessary to reduce the invention to practice, and extensive research or experimentation would not be needed. Id. However, each contributor need not make the same type, or amount, of contribution to the invention. Rather, each needs to perform only a part of the task which produced the invention. Id. Once the idea has been conceived, an inventor may then use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent. Importantly, one may not qualify as an inventor by merely assisting in reducing the idea to practice, after it has been conceived. To qualify as an inventor, the assister must make substantial, not just superficial, changes to the design; the new design must contain an inventive concept. Id. A court will determine whether the revised design is substantially similar to the first. Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871). If the court determines that the revised design is substantially similar to the original design, the assister will not be considered an inventor.
If omitted, a contributor to a new and original ornamental design may still seek to be designated as an inventor. In such a case, the purported inventor must produce corroborating evidence to support testimony that she conceived of the invention. Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 1379 (Fed. Cir. 2001). Reliable evidence of corroboration preferably comes in the form of physical records that were made contemporaneously with the alleged prior invention. Circumstantial evidence and oral testimony of someone other than the alleged inventor may also be used to corroborate inventorship. Trovan, Ltd. V. Sokymat SA, 299 F.3d 1292, 1302-03 (Fed. Cir. 2002). Although the existence of corroborating evidence does not present a prima facie case of inventorship, it places the burden of rebuttal evidence on the patentee. Innovative Scuba Concepts, Inc. v. Feder Industries, Inc., 26 F.3d 1112, 1115 (Fed. Cir. 1994).
In sum, a design patent inventor is one who conceives of the claimed invention. While in some circumstances this may include multiple individuals, those who merely assist in perfecting the invention should not be named as inventors. If an alleged inventor sues on the basis of non joinder of an inventor, she must present corroborating evidence to shift the burden of rebuttal evidence on the patentee.