[Webinar] Patent Inventorship: Best Practices for Determination and Correction

May 7th, 1:00 pm - 2:30 pm EDT
May 7th, 2024
1:00 PM - 2:30 PM EDT

Distinguishing Between Inventor and Contributor; Navigating Joint Inventorship, Disclosure of Ownership, Real Party in Interest

A live 90-minute premium CLE video webinar with interactive Q&A

This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working with the AIA since its passage and outline lessons from recent court decisions.


The question of inventorship is often tricky, particularly when scientists include all parties involved with an invention on the disclosure form. Patent counsel must determine which person(s) is an inventor and how each contributed.

The Federal Circuit addressed inventorship on collaborative projects. When determining joint inventorship, the court confirmed that the parties are not required to work on the invention physically together or contribute equally. Blue Gentian, LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1365 (Fed. Cir. 2023). Further, the court stated joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher's contribution. Dana-Farber Cancer Inc. v. Ono Pharm. Co. Ltd. (Fed. Cir. 2020). But joint inventorship does require that the contribution to the invention is significant. HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346 (Fed. Cir. 2023)

If errors are discovered later, the patent application may need to be changed after filing. Counsel can correct an application while it's pending or after the patent is granted, so long as errors in listing the inventors were without deceptive intent.

Patent counsel must learn to properly conduct an inventorship determination to avoid complications that result from incorrect or incomplete identification and determination. Counsel can leverage lessons and practical experiences from working with the AIA from our panel of experienced patent practitioners.

Listen as our authoritative panel explains determining inventorship, naming the applicant, and managing new forms and procedures related to inventorship. The panel will review the duty of candor, best mode as applied to the inventors, and recent court treatment. The panel will also offer their perspectives and guidance for correcting or changing inventorship.


  1. Inventorship determination
    1. Sole vs. joint
    2. Document review
    3. Questions to ask to determine inventorship
    4. Naming applicant
    5. Court treatment
    6. Impact of AIA (or lack thereof)
  2. Real party in interest
  3. Correcting inventorship
    1. Pre vs. post-filing
    2. Provisional application
  4. Best practices


The panel will review these and other key issues:

  • What information does counsel need to determine inventorship?
  • What are the steps for counsel when inventorship must be corrected?
  • What is the AIA's impact on inventorship determination?


Bosch, Michele

Michele C. Bosch
Finnegan Henderson Farabow Garrett & Dunner

Ms. Bosch leads the firm’s Chemical and Metallurgical practice group. Her practice includes many areas of intellectual property law with an emphasis on post-grant proceedings, including inter partes review (IPR), post-grant review (PGR) and patent interference proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO); portfolio management and analysis; due diligence investigations; pre-litigation analysis; and comprehensive strategic client counseling in the life sciences, consumer product, petrochemical and organic chemical areas.

Hanson, Mark

Mark Hanson
Of Counsel
Finnegan, Henderson, Farabow, Garrett & Dunner

Mr. Hanson has more than a decade of experience working with both startups and larger companies on the analysis, procurement, and protection of intellectual property in the biotechnology, chemical, and pharmaceutical industries. His broad experience includes strategic client counseling, management of U.S. and foreign patent portfolios, technical support with litigation matters before the International Trade Commission (ITC), due diligence analyses, appeals before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and IP licensing matters. Mr. Hanson focuses on strategic client counseling, including U.S. and foreign patent prosecution; due diligence and patent landscape analysis; portfolio monetization and business development strategies; management of IP transfer and license agreements; and freedom-to-operate, validity, and patentability opinions. His technical expertise extends to a broad range of fields across the chemical, biochemical, and biotechnology industries, including chemical and biochemical manufacturing; viral-based gene therapies; RNAi oligonucleotide therapies; organic molecules and pharmaceuticals; gels and aerogels; drug delivery formulations and bioencapsulation; polymers and plastic composites; antibodies and biologics; vaccines; cosmetics; biofuels and renewable energy; petrochemicals; biomedical devices; food chemistry; and carbon sequestration technology.

Masters, James

James T. Masters, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner

Dr. Masters focuses on patent prosecution, opinions and counseling, patent mapping, and patent litigation in the biotechnology, chemical, pharmaceutical, and medical device fields.

Murphy, Amanda

Dr. Amanda K. Murphy, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new patent applications, prosecutes U.S. and foreign applications, and represents applicants at appeals and oral hearings before the PTAB. She has experience in prosecuting inter partes and ex partes reexamination applications, reissue applications, and patent term extension applications for approved pharmaceuticals, including obtaining supplemental protection certificates in Europe.




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  • Ongoing guidance

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