When a new invention is developed and a client communicates with a patent attorney regarding it, sometimes an invention disclosure is provided with inventors and inventor information already identified. In other situations, a patent attorney may need to ask the client, “Who should be named as an inventor on the patent?” and may be lucky enough to get a quick response from the client. While it would be nice to take such easy answers and lists at face value, there is more needed to complete the evaluation and clearly identify the true inventors of a patent application.

This can be a difficult issue to evaluate, particularly where there is potential third-party involvement, a joint venture or an inventor no longer working with the client. Even more difficult situations arise when clients, particularly inexperienced ones, simply have a lack of understanding of what it means to be an inventor and of how to determine inventorship. Clients may seem very sure when presenting inventorship lists, but they could be operating under misconceptions that can create problems later, when the patent owner is engaged in costly patent enforcement litigation or trying to seek a high value for a property in a business transaction or loan.

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