New Test of Inventorship?

In Nartron Corp. v. Schukra U.S.A., Inc., No. 2008-1363 (Fed. Cir. Mar. 5, 2009), the Federal Circuit found that an alleged co-inventor “provided only an insignificant contribution” (i.e., contributing an “extender” ) to the invention of a dependent claim. Therefore, it reversed the district court’s grant of summary judgment of dismissal of the patent infringement complaint due to Plaintiff’s failure to join an alleged co-inventor and remanded the case to the district court for further action.

Key Issue:
• Whether an alleged co-inventor can claim co-inventorship when he contributed a sole, but insignificant, feature of a dependent claim?

Holding:
• An alleged co-inventor cannot claim co-inventorship when he contributed only an insignificant feature of a dependent claim.

Commentary:

In this case, the contributed feature was already in prior art and its combination with key inventive features was obvious. Therefore, the Court reasonably concluded that the contribution was too “insignificant” to justify the co-inventorship.

The Court appears to shift away from the traditional understanding that no matter how small one’s contribution to the invention is, as long as a person contributed to the invention, he is a co-inventor. Sure, it is reasonable to evaluate the “significance” of the contribution when determining the inventorship.

The problem, however, is that this rule moves away from a bright-line test and makes it very difficult to determine the exact inventorship when drafting an application.

For example, in this case, the Court seems to bring the obviouness analysis into the inventorship inquiry. This complicates the drafting process. On the other hand, if the feature in question is really obvious, what is the value of this dependent claim? And why did the applicant add that dependent claim?

A better rule would be to impose a small burden on each applicant to list all persons who contributed to the claims as inventors. In other words, simplify the inventorship inquiry by using the contribution test, and not the “significance” test. Leave the “significance” test to the invalidity analysis. This way, the Court would maintain a bright-line test for inventorship, which, in my humble opinion, is more cost-effective in terms of litigation costs and judicial efficiency.