Let´s assume that a company has designed and developed several "building blocks", components, elements or devices that when combined and considered in a specific way (and only in that way) define a final and complete solution (device composed of several sub-elements or components) that will be patented. If:
- An inventor is a party who conceived (not just contributed to the reduction-to-practice) at least one claim to a patent,
- the threshold question" of inventorship is "who conceived the invention".
- Conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice..". An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.
Can the employee who described the final configuration, who selected the building blocks to be added to the "integrated device" and the bloxks to be left out of the PCT, who also selected and defined the list of claims to be included in the PCT and who prepared the documents submitted to apply for the PCT be included as co-inventor? Has he any any rights on this PCT?
For example, should other different set of sub-components be selected and listed on the PCT, or claims defined in a different way, the PCT would be declared as not "innovative" or not novel. This guy selected the right building blocks, the right claims to be included on the PCT and prepared the documentation submitted (obviously includind the building blocks created by other guys in his company).