Too many cooks in the kitchen: Who’s an inventor?
Identifying an inventor on a patent application can be a complex analysis. A recent ruling from the U.S. Court of Appeals for the Federal Circuit sheds light on the degree of contribution required to qualify as an inventor.
Hogging the credit
Hormel Foods Corporation owns a patent for methods of precooking bacon and meat. The first claimed step involves preheating with a microwave oven, infrared oven or hot air. The second claimed step recites high-temperature cooking.
Before Hormel filed its patent application, it entered into a joint agreement with Unitherm, now HIP Inc., to develop an oven for use in a two-step cooking process. During a joint meeting, a Unitherm employee suggested using an infrared oven during the first step. When Hormel filed its patent application, the Unitherm employee wasn’t named as an inventor. Using infrared heating during the first step is recited in an independent claim, as one of several alternatives that also include using a microwave oven and hot air.
HIP sued Hormel, alleging that its employee was the sole or joint inventor. The trial court found the employee was a joint inventor because infrared preheating was recited in a claim. Hormel appealed.
Court saves the bacon
Applying the Pannu factors, a person is an inventor if:
- They contribute in some significant manner to the conception of the invention,
- Their contribution to the claimed invention isn’t insignificant in quality when measured against the full invention, and
- They did more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Here, the Federal Circuit focused its analysis on the second factor and found that the contribution of preheating meat with an infrared oven was “insignificant in quality” to the claimed invention. The court noted that preheating with microwave ovens and ovens themselves was featured “prominently throughout the specification, claims, and figures,” including the background and detailed description. Infrared heating, however, wasn’t nearly as emphasized. Five cooking examples, along with corresponding figures, each employed procedures using preheating with a microwave, but not once with an infrared oven. In fact, infrared preheating was mentioned once in the specification, as an alternative to a microwave oven. The employee was deemed not to be an inventor because the contribution of preheating with an infrared oven is “‘insignificant in quality’ when ‘measured against the dimension of the full invention,’ which squarely focuses on a preheating step using a microwave oven.”
A recipe worth noting
Thus, the court found that HIP failed to establish the second factor for joint inventorship, and didn’t address the remaining factors. This finding provides guidance for inventors and drafters for separating the wheat (the inventors) from the chaff.