In patent law, the concept of inventorship is immensely significant, as it determines the individuals who are the owners and rightfully receive credit for the creation of a novel invention.

Not all contributions, however, rise to a level worthy of recognition. Even seemingly valuable ideas or suggestions can fall short of the threshold contribution required to be deemed an inventor.

In a recent case before the Court of Appeals for the Federal Circuit, HIP, Inc. v. Hormel Foods Corp. (May 2, 2023), the court was tasked with reassessing the district court's decision to add an inventor to a patent.

As the court notes in its decision, the burden of proving inventorship is a “heavy one,” and in this article, we delve into the concept of inventorship, exploring the threshold of significance for an individual contribution to an invention, and the factors that a court must consider in determining joint inventorship.

Businesses should take careful note of the criteria described below and should consider developing a comprehensive patent strategy that includes experienced patent attorneys for guidance in evaluating inventor contributions and navigating potential disputes or legal challenges.

Background

Hormel Foods Corporation is the owner of U.S. Patent No. 9,980,498 directed to methods of precooking bacon and meat pieces. The patent describes a two-step cooking process involving a preheating step using a microwave oven, infrared oven, or hot air, and a second, higher temperature cooking step, resulting in an improved cooking process.

David Howard, an employee of Unitherm Food Systems, Inc. (now HIP), alleged that during discussions and testing sessions with Hormel representatives he contributed the concept of preheating with an infrared oven. HIP had collaborated with Hormel to develop an oven for the two-step cooking process.

HIP argued that Howard’s contribution added significantly to the patent by disclosing the concept of infrared preheating, and contended that this contribution was corroborated by testimonies, testing data, and the lack of “conception” by the named inventors. HIP consequently filed a lawsuit against Hormel asserting that Howard should be added as a joint inventor of the patent.

The Concept of Patent Inventorship

The determination of patent inventorship requires meeting certain criteria, and courts apply a three-part test, articulated in Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998), to assess an individual's contribution to an invention.

According to the test, an alleged joint inventor must: (1) contribute in some significant manner to the conception of the invention; (2) make 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) do more than merely explain to the real inventors well-known concepts and/or the current state of the art. When attempting to prove inventorship after a patent has been issued, an alleged joint inventor may prove so only with clear and convincing evidence.

In the case at hand, the district court concluded that Howard was entitled to be a joint inventor based on his claimed contribution of the infrared preheating concept. The district court deemed the contribution significant, considering the patent’s independent claims, as well as the corroboration of Howard's testimony by testing data and witness statements from other inventors.

Hormel challenged the district court's decision, arguing that when evaluated against the scope of the entire invention Howard's alleged contribution was insignificant and that the district court erred in considering the infrared preheating as significant.

The Appellate Court Ruling

On appeal, the Federal Circuit sided with Hormel, holding that Howard was not a joint inventor on the patent. The court emphasized that the patent claims prominently feature preheating with microwave ovens, with heating with a microwave oven mentioned throughout the specification and patent. Howard’s alleged infrared preheating was mentioned only once as an alternative heating method to a microwave oven and as the court said “not one example describes preheating with an infrared oven.”

The limited mention and significance of the infrared preheating concept, according to the court, made Howard's contribution “insignificant in quality” when measured against the full invention. Thus the court determined that his contribution regarding the infrared oven was tangential to the core invention, as infrared preheating played a peripheral role, and thus, he could not be considered a joint inventor.

Understanding the Significance of Contribution

This case serves as a stark reminder of the importance of determining inventorship in patent law. While collaboration and discussions between parties are common during development, not every contribution, under the Patent Law, reaches the level of joint inventorship.

The failure of Howard (and HIP) to be acknowledged as an inventor emphasizes the need for would-be inventors to take proactive steps, such as outlining the expectations regarding inventorship and drafting collaboration agreements, to strengthen their position and minimize the risk of disputes and legal challenges to ensure that one's contribution aligns with the overall scope and impact of the invention.

By understanding the threshold contribution required to be deemed an inventor, businesses, and the individuals behind such inventions, can position themselves more effectively, protect their intellectual property rights, and avoid the complexities and uncertainties associated with inventorship disputes.