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First, an explanation of the overall context is needed: A CIP has been filed by a sole inventor (me). After filing, it was decided that another individual probably should have been credited as a co-inventor, due to contribution of an idea that later was incorporated into specs and claims. The inclusion of that co-inventorship has not yet been done, but the 1st OA has been received.

The claims based on the other person's contributed idea have been challenged as reading on prior art. It is not yet clear if that can be overcome.

If those claims are ultimately dropped, there will still be references to that concept in the CIP's specs – it just won't be part of any claim. In this scenario, is the question of post-application inclusion of the other person as an inventor now moot?

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It isn’t moot - it would be positively improper to add them. In the U.S. an inventor is someone who makes a conceptual contribution to something in a claim. Someone might be an inventor in a divisional but not the parent application, for example, if the they contributed conceptually to something claimed in the divisional, not the parent.

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  • To summarize: You are saying that a contribution to claims (that are successfully prosecuted and allowed) constitutes inventorship, but a contribution to specs that are not in claims does not. Is that a valid conclusion? – Charles Dec 9 '19 at 13:51
  • yes and I edited the answer for clarity. – George White Dec 9 '19 at 22:51

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