In Brief:  Inventorship can be based on unclaimed improvements that are necessary for enabling the invention to work. 

Here’s What Happened:  

Steve Campbell invented a container for transporting gaseous fluids consisting of an insulated housing, pressure vessels and port bosses. But his prototypes suffered from numerous problems, including slippage of the port boss on the vessel's liner. The invention could not be considered complete until the problems were solved. Without a complete invention, Steve couldn’t file a patent application.

Steve approached Gary Mackay and Dan Hewson’s company, to help fix the problems. Gary and Dan provided Steve with drawings that showed how to solve the port boss problem.

Steve went on to obtain a patent.

Gary and Dan sued Steve to be named as inventors on the patent. The district court found that Gary and Dan’s had contributed significantly to the invention and so should have been named as inventors. Steve appealed to the Federal Circuit Court of Appeals.

Steve argued that Gary and Dan’s contributions to the invention did not appear in the claims. So Gary and Dan shouldn’t be named as inventors. The Circuit Court disagreed that the naming improvements in claims is required for inventorship. Gary and Dan’s improvements may have been unclaimed but they contributed to the conception of the invention. Prior to their involvement, Steve didn’t have an idea that could be reduced to practice with ordinary skill without extensive research or experimentation.

The Circuit Court affirmed the district court’s judgment.

Why You Should Know This: Everyone who contributes significantly to a patent have to be named as inventors. It’s a statutory requirement. Steve is now faced with having co-inventors who have not agreed to assign their interest in the patent to Steve or his company. This serves as a reminder to make sure that the relationship among inventors is properly documented at the outset (including proper assignments).

Case Information: Tube-Mac Industries, Inc., Gary Mackay, Dan Hewson, v. Steve Campbell, Tranzgaz, Inc., 2024 WL 1132229  (Fed. Cir. Mar. 15, 2024)

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