Legal Standards for Adding an Omitted Inventor
“The burden of proving that an individual should have been added as an inventor to an issued patent is a ‘heavy one,’” and “the issuance of a patent creates a presumption that the named inventors are the true and only inventors.” Id. at 1350 (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998) and Gen. Elec. Co. v. Wilkins, 750 F.3d 1324, 1329 (Fed. Cir. 2014)). To be added as an inventor, an alleged joint inventor must prove their claim by clear and convincing evidence.
“To qualify as a joint inventor, a person must make a significant contribution to the invention as claimed.” Id. (citing Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997)). One must successfully argue that all elements of the three-part Pannu test are met. It must be shown that the 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.” Id. (citing Pannu, 155 F.3d at 1351).
Were Howard’s Contributions Enough to Make Him an Inventor?
Hormel argued that the district court (1) failed to analyze the significance of Howard’s alleged contribution considering the full invention and (2) erred in concluding that the infrared preheating option in the claims was significant.
The panel concluded that Howard was not a joint inventor based on the second Pannu factor, which considers whether the individual 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. In particular, the panel considered Howard’s contribution to be insignificant in quality because infrared preheating was mentioned only once in the patent specification and recited only in a single claim.
In arriving at this conclusion, the panel contrasted the disclosure of infrared oven preheating with the disclosure of microwave oven preheating in the patent. The panel explained that preheating with microwave ovens, and the use of microwave ovens, was prominently featured throughout the specification, claims, and figures, which the panel contrasted with the mere passing mention of infrared preheating in the specification. Further, the panel noted that the use of microwave ovens was specifically mentioned in the summary of the invention, whereas there was no mention of using infrared ovens in the summary. Thus, the panel reversed the district court because, based on the particular facts of this case, Howard’s contribution to the claims was viewed as insignificant and insufficient to justify adding him as a joint inventor.
The panel’s opinion demonstrates that the question of whether an individual should be added as an inventor on a patent requires a fact-intensive analysis based on the Pannu factors. This opinion illustrates that being a joint inventor requires the contribution of something “significant in quality,” and more than merely explaining well-known concepts and/or the state of the art. In this case, the contribution of an idea—even though the idea was expressly mentioned in the specification and included in a claim—was considered to be insignificant in quality and, thus, not adequate to be added as a joint inventor on a patent.