Inventorship Determination Checklist: Claim-by-Claim Analysis, Conception Records, Correction Papers, and Assignment Gaps

By Casey Scott McKay · 2023-10-15

This checklist determines who the inventors are, proves it, and fixes it when the answer changes - with gates at the points where an error stops being paperwork and becomes a co-ownership problem. It begins with an invention disclosure form built to capture conception element by element while people still remember, and the retention exclusions that keep the corroborating records alive to year twelve. It specifies the claim-by-claim grid, the separate interviews that produce accurate rather than social answers, and the re-check at allowance that catches amendments changing the inventive entity. It covers both correction routes and the approach to an omitted inventor, then runs the assignment audit against the population rather than the patent list. It closes with joint ownership, defending an inventorship attack, diligence, and the annual review.

IP and Technology > Patent Counseling Transactions | Checklist | Published 15 October 2023 - Updated 26 September 2025 | Casey Scott McKay - marksy.us

Summary. This checklist determines who the inventors are, proves it, and fixes it when the answer changes — with gates at the points where an error stops being paperwork and becomes a co-ownership problem. It begins with an invention disclosure form built to capture conception element by element while people still remember, and the retention exclusions that keep the corroborating records alive to year twelve. It specifies the claim-by-claim grid, the separate interviews that produce accurate rather than social answers, and the re-check at allowance that catches amendments changing the inventive entity. It covers both correction routes and the approach to an omitted inventor, then runs the assignment audit against the population rather than the patent list. It closes with joint ownership, defending an inventorship attack, diligence, and the annual review.

Keywords: disclosure form design · element by element contribution · conception interviews · corroboration sources · retention exclusions · claim by claim grid · Pannu factors · union across claims · allowance re-check · Rule 48 request · Section 256 petition · court ordered correction · assignment population audit · present assignment language · confirmatory assignment recordation · joint ownership agreement · co-owner buyout · defending an attack · diligence requests · annual review

How to use this checklist

| Phase | What it covers | |---|---| | 1 | The disclosure form | | 2 | Outside contributor routing | | 3 | Retention exclusions | | 4 | The claim-by-claim grid | | 5 | Applying the Pannu factors | | 6 | Conception interviews | | 7 | Corroboration | | 8 | The allowance re-check | | 9 | Correction during prosecution | | 10 | Correction after issuance | | 11 | Approaching an omitted inventor | | 12 | The assignment population audit | | 13 | Assignment drafting | | 14 | Recordation | | 15 | Joint ownership | | 16 | Buyout analysis | | 17 | Derivation and theft | | 18 | Defending an attack | | 19 | Special situations | | 20 | Diligence requests | | 21 | The difficult conversations | | 22 | Annual review |

Boxes marked [Gate] must clear before an application is filed, or before an omitted inventor is approached.

The matter. A company discovered four years into a licensing programme that a consultant who attended two design meetings had contributed the limitation distinguishing claim 7 from the prior art. He was never named and never signed an assignment.

Phase 1. The disclosure form

[ ] [Gate] Ask element by element, not project by project. For each significant feature: who first described it, approximately when, and what document shows that.
[ ] Capture the document reference, not just the name.
- Why. "Jane, 14 March, design memo DM-207" is evidence. "Jane" is a recollection.
[ ] List everyone who participated in any relevant discussion, with role, employment status, and assignment status.
[ ] [Gate] Make the outside-party field mandatory, with an explicit "none" option — consultants, contractors, academic collaborators, customers, suppliers.
- Trap. A blank field is how outside contributors disappear.
[ ] Ask about prior public disclosure, with dates, feeding the 35 U.S.C. § 102(b) analysis on the same form.
[ ] Ask about earlier work at a prior employer or institution. Uncomfortable, and it prevents a far worse dispute.
[ ] Have each contributor sign their own entries. No manager signs on behalf of a team.
[ ] [Gate] Complete it at conception, not at filing. A form generated to support an application corroborates almost nothing.

Phase 2. Outside contributor routing

[ ] [Gate] Any disclosure naming an outside party routes to legal before filing.
- Why. This single rule prevents the expensive version of the problem.
[ ] Check whether an assignment exists covering the specific work, not merely a confidentiality agreement.
- Trap. An NDA says nothing about ownership of inventions.
[ ] Check the scope and effective date of any agreement against when the work occurred.
[ ] Escalate immediately where no assignment exists, because delay increases the person's leverage daily.
[ ] Record the outcome, including a decision not to name someone and why.

Phase 3. Retention exclusions

[ ] [Gate] Amend the retention schedule so conception evidence outlives the patent term.
[ ] Permanent: invention disclosure forms and attachments.
[ ] Term plus six years: laboratory notebooks, engineering design records, meeting records, design review materials, and the prosecution and inventorship files.
[ ] [Gate] Exclude named inventors' message archives from routine deletion.
- Why. Modern conception evidence is overwhelmingly in messages, and this is the category most likely to be purged.
[ ] [Gate] Exclude departing inventors' mailboxes from the standard post-departure deletion, automatically rather than by a manual step.
[ ] Protect version control history through platform migrations, since repositories carry authorship and timestamps automatically.
[ ] Test it. Ask for conception evidence on a patent issued six years ago. If it is gone, the policy change is overdue.

Phase 4. The claim-by-claim grid

[ ] [Gate] Build the grid at filing. Claims down the left, candidate contributors across the top. Ninety minutes for a typical application.
[ ] For each independent claim, isolate the limitations distinguishing it from the closest prior art.
- Why. Contributions to well-known subject matter are not inventive — Hess v. Advanced Cardiovascular Systems.
[ ] For each such limitation ask: who first articulated a definite and permanent idea of it, per Burroughs Wellcome v. Barr Laboratories; what corroborates that; and whether the person was working toward a common end, per Fina Oil & Chemical v. Ewen.
[ ] Work the dependent claims separately.
- Why. Under 35 U.S.C. § 116 a joint inventor need not contribute to every claim, so one dependent claim can bring a person in.
[ ] [Gate] Aggregate as a union across claims, not an intersection.
[ ] Remember Dana-Farber v. Ono Pharmaceutical: contributions need not be equal or simultaneous, and no joint inventor need have conceived the whole.

Phase 5. Applying the Pannu factors

[ ] Did the person contribute in some significant manner to conception or reduction to practice?
[ ] Is the contribution not insignificant in quality when measured against the dimension of the full invention?
[ ] Did the person do more than explain well-known concepts or the current state of the art?
- Reference. Pannu v. Iolab.
[ ] Exclude those who only supervised, funded, or directed.
[ ] Exclude skilled reduction to practice. Building it and making it work is not inventing.
[ ] Exclude suggesting a desirable result without a way to achieve it.
[ ] Remember only a natural person qualifies, per Thaler v. Vidal. Where a tool contributed, document which human conceived the claimed subject matter.

Phase 6. Conception interviews

[ ] [Gate] Interview separately. Group discussions produce socially acceptable answers, and the most senior person shapes everyone's recollection.
[ ] Ask about the specific limitation, not the project.
[ ] Ask "what would show that?" and then go and look.
[ ] Ask who else was in the conversation. This is how outside contributors surface.
[ ] Ask about earlier work, including at a prior employer.
[ ] Do not signal the desired answer.
[ ] Write a contemporaneous memo of each interview with documents identified, and consider the privilege posture. See the IP Privilege Protection Checklist.

Phase 7. Corroboration

[ ] [Gate] Confirm each conception claim has corroboration. Uncorroborated inventor testimony does not carry the point.
[ ] Good sources: dated documents describing the idea rather than the project; neutral witnesses; timestamped messages; meeting records attributing ideas to people; version-controlled documents and code.
[ ] Poor sources: reconstructed timelines, documents created for the purpose, anything undated, forms completed by someone other than the contributor.
[ ] Check engineering records before the legal file. Engineering usually has better dated evidence and nobody looks.
[ ] Record where each piece of corroboration lives, so it can be found in year twelve.

Phase 8. The allowance re-check

[ ] [Gate] Docket "inventorship re-check" on every notice of allowance. Fifteen minutes, and the single most valuable habit in this practice.
[ ] Compare allowed claims against claims as filed.
[ ] Re-run the grid for any claim added or materially amended.
- Why. A new claim may have a different inventive entity — Trovan v. Sokymat.
[ ] Do the same on every continuation, whose claims are often drafted years later around a competitor's product.
[ ] Correct now if the answer changed, because the route is administrative at this stage.

Phase 9. Correction during prosecution

[ ] File a request under 37 C.F.R. § 1.48 identifying the inventor added or removed.
[ ] Include a corrected application data sheet showing the revised inventive entity.
[ ] Include an oath or declaration for any added inventor, meeting 37 C.F.R. § 1.63.
[ ] Pay the fee.
[ ] Note what is not required: no explanation of how the error arose, and no consent from a removed inventor.
[ ] Recognize the cost difference. Fixing here is a filing; fixing after issuance is a negotiation.

Phase 10. Correction after issuance

[ ] [Gate] Confirm the analysis before approaching anyone.
- Trap. An approach based on a mistaken conclusion converts a question into an admission.
[ ] Use 35 U.S.C. § 256, which since the America Invents Act reaches essentially any error, deceptive intent included, and which Stark v. Advanced Magnetics reads broadly.
[ ] Rely on the saving clause: a correctable error does not invalidate the patent.
[ ] By agreement: statements from each person added or removed, plus agreement from all assignees of record, plus the fee.
[ ] By court order under § 256(b), on notice and hearing — slower, public, and it fixes the patent without fixing ownership.
[ ] Watch the assignee-of-record problem. An unrecorded assignment leaves the original inventor as assignee of record, making their cooperation necessary years later.

Phase 11. Approaching an omitted inventor

[ ] [Gate] Know three things first: the completed grid and its evidence; the person's assignment position; and what you will ask for.
[ ] If they already assigned, frame it as recognition. Nothing changes commercially, and most people are pleased.
[ ] If they did not assign, treat it as a commercial negotiation from the first sentence, because under 35 U.S.C. § 262 they are about to become a co-owner.
[ ] Approach through counsel where the relationship is strained.
[ ] Prefer a one-time payment for the assignment over a royalty share, which creates an ongoing accounting obligation.
[ ] Offer recognition, which is frequently worth more to the person and costs nothing.
[ ] [Gate] Do not suggest the omission was deliberate, do not speculate about value, and do not disclose a pending transaction or suit.
[ ] Move quickly. Delay is the worst response; leverage accrues to them weekly.
[ ] Document offers made and refused.

Phase 12. The assignment population audit

[ ] [Gate] Start with the population, not the patent list. Employees, former employees, contractors, consultants, interns, visiting researchers, advisors, pre-incorporation founders, academic collaborators.
[ ] Four questions per person. Signed agreement? Present assignment language? Scope covering the work, including work before signature? Confirmatory assignment recorded per application?
[ ] Flag promise-to-assign language.
- Why. FilmTec v. Allied-Signal and Board of Trustees of Stanford v. Roche show it can be defeated by a later present assignment.
[ ] Flag agreements signed after work began with no retroactive scope.
[ ] Flag founders who invented before incorporation.
[ ] Flag contractors on statements of work silent on inventions.
[ ] Flag institutional policies doing an assignment's work, where exact wording decides — Omni MedSci v. Apple.
[ ] Flag acquired portfolios whose chain was never verified.
[ ] Record the gaps that cannot be closed, because a known gap can be priced.

Phase 13. Assignment drafting

[ ] [Gate] Present-tense language: "hereby assigns." Not "agrees to assign."
[ ] Execute before work begins.
[ ] Cover every category of person on the Phase 12 list.
[ ] Include a duty to execute confirmatory documents and a power of attorney for the case where someone becomes unreachable.
[ ] Recite any applicable state limitation on the reach of employee invention assignments.
[ ] Cover pre-agreement work expressly where relevant.
[ ] Include a confidentiality obligation, which is separate and also necessary.

Phase 14. Recordation

[ ] Record each assignment under 35 U.S.C. § 261.
- Why. Recordation protects against a subsequent purchaser without notice, and unrecorded assignments are a standard diligence finding.
[ ] Record confirmatory assignments per application, not only the master employment agreement.
[ ] Verify the chain through every corporate change — name changes, mergers, asset sales.
[ ] Reconcile the recordation records against the file annually. They diverge.

Phase 15. Joint ownership

[ ] [Gate] Understand the default. Under 35 U.S.C. § 262, each co-owner may practise and license non-exclusively without consent and without accounting; none may grant an effective exclusive licence; and all must join to enforce — Ethicon v. United States Surgical.
[ ] Negotiate a joint ownership agreement covering: licensing rights and revenue sharing; enforcement and an obligation to join; a mechanism for exclusive licensing; prosecution control and funding with a takeover option; maintenance fees under 35 U.S.C. § 41; transfer restrictions including a bar on transfer to a competitor; and treatment of improvements and continuations.
[ ] Record the agreement under 35 U.S.C. § 261.
[ ] Expect institutional co-owners to bring standard terms and funding obligations. See the Patent Licensing and Technology Transfer Toolkit.

Phase 16. Buyout analysis

[ ] Price the interest against the cost of a permanently constrained asset, not against the co-owner's contribution.
[ ] Value the loss of exclusive licensing.
[ ] Value the loss of unilateral enforcement.
[ ] Value the risk of a licence to a competitor, which the co-owner may grant at any time.
[ ] Compare against the buyout price, which is usually far lower than the constrained-asset discount.
[ ] Structure as a present assignment with recordation, not a covenant not to license.

Phase 17. Derivation and theft

[ ] Ask two questions first. Was there a written confidentiality obligation at the time of disclosure, and what document proves the disclosure happened?
[ ] Consider 35 U.S.C. § 135 derivation, noting the one-year window from first publication of a substantially identical claim.
[ ] Prefer correction under 35 U.S.C. § 256 where the goal is the right name on the patent, since it has no timing bar.
[ ] Consider trade secret misappropriation under 18 U.S.C. § 1836, with better remedies. See Trade Secrets and the DTSA.
[ ] Consider breach of contract, usually the simplest theory with the clearest damages.

Phase 18. Defending an attack

[ ] [Gate] Run your own grid on the asserted claims before filing suit, not after the defence raises it.
[ ] Recognize the move. Finding an omitted contributor and obtaining a retroactive licence ends the case — the Ethicon play, which costs a defendant almost nothing to attempt.
[ ] Test the challenger's proof. Clear and convincing evidence is required, and uncorroborated testimony does not suffice.
[ ] Apply the Pannu factors against them.
[ ] Check the claim. A contributor to a cancelled claim is not an inventor of the issued patent.
[ ] Raise the assignment early where the putative inventor assigned everything, which removes their leverage.
[ ] Expect standing regardless of financial interest, per Shukh v. Seagate Technology.

Phase 19. Special situations

[ ] Universities. Obtain the policy text in force when the researcher joined, not the current version. Confirm federal funding involvement.
[ ] Students and postdoctoral researchers, frequently the conceivers and frequently outside the employee assignment regime.
[ ] Founders and pre-incorporation work, checking the assigning entity is the one that now owns the patents.
[ ] Acquired portfolios, verifying the chain through every intermediate entity.
[ ] Joint development partners. A contract cannot allocate inventorship; it can allocate ownership and specify a joint review procedure before each filing. See the Joint Development Agreement Checklist.
[ ] Customers and suppliers. A customer describing a requirement is not an inventor; one describing the solution may be.
[ ] Employees inventing off-project, where state statutes limit assignment reach.

Phase 20. Diligence requests

[ ] Invention disclosure forms, compared against named inventors.
[ ] Executed assignments and recordation confirmations, read for present-tense language.
[ ] Every contractor, consultant, and academic collaborator on the subject matter, with agreements.
[ ] The inventorship analysis at allowance for any patent with amended claims.
[ ] Every patent with more than one owner of record, with the joint ownership agreement.
[ ] Any former employee or collaborator who has claimed contribution.
[ ] Price the findings rather than covenanting around them, and make confirmatory assignments a closing condition.

Phase 21. The difficult conversations

[ ] To the manager who ran the programme. Direction, funding, and choosing the problem are not conception. Give the credit somewhere it belongs, because the objection is about recognition.
[ ] To the engineer who built it. Reduction to practice is not invention — but if any part of the work required conceiving something the claim covers, show the notebook entry and they get named.
[ ] [Gate] Have both conversations in advance, when the disclosure process is introduced, not when a name is being removed.
[ ] Explain the union-across-claims rule, which is counterintuitive and explains why a two-meeting consultant can be an inventor.

Phase 22. Annual review

[ ] Confirm every named inventor has a recorded present assignment, run as a report against recordation records rather than the file.
[ ] Confirm the allowance re-check happened for every patent issued in the year.
[ ] Review the year's disclosure forms for outside contributors and confirm routing.
[ ] Re-run the audit against joiners and leavers.
[ ] Confirm retention exclusions still operate, since deletion policies change silently during platform migrations.
[ ] Grid one high-value issued patent retrospectively, while nothing is adverse.
[ ] Report one number: the proportion of the portfolio for which the company can produce, on request, a claim-by-claim inventorship analysis and a recorded assignment for every named inventor.

Outcome. The grid found the consultant was a joint inventor of claim 7, and the union rule under 35 U.S.C. § 116 made him a joint inventor of the patent. He had signed a confidentiality agreement and nothing else, so under 35 U.S.C. § 262 he was a co-owner entitled to license the patent to anyone without consent or accounting. He was approached within a week of the finding, through counsel, before the licensing programme became public, and assigned his interest for a one-time payment and an acknowledgement in the company's materials — which he said afterwards had mattered more. Correction proceeded by agreement under 35 U.S.C. § 256. The assignment audit that followed found eleven contractors with statements of work silent on inventions and a promise-to-assign clause in the standard employment agreement dating from before the company's second funding round; both were remediated over the following quarter, and the retention schedule was amended to exclude named inventors' message archives from routine deletion.

Phase 23. The disclosure form, as a template

Use this structure for Phase 1. The value is entirely in Section B.

Section A — the invention. Title. Short technical description. Problem addressed. How it differs from what was already being done — the field that identifies the potentially inventive limitations.

Section B — contribution, element by element. One repeating block per significant feature:

Feature: ____________ Who first described this feature: ____________ Approximately when: ____________ Document, message, notebook entry, or meeting where it first appears: ____________ Who else was present or copied: ____________

[ ] This block is the entire value of the form. It converts a recollection into a citation while people still remember.

Section C — everyone involved. A table: name, role, employment status, assignment on file, present-tense language confirmed.

[ ] Any blank or uncertain assignment cell routes to legal before filing.

Section D — outside parties. Consultants, contractors, academic collaborators, customers, suppliers. Mandatory field with an explicit "none" option.

Section E — prior disclosure. Public description, offers for sale, showings outside the company, with dates. Feeds the 35 U.S.C. § 102(b) analysis on the same form because it is the same conversation.

Section F — earlier work. Whether any contributor developed part of this at a prior employer or institution.

Signatures. Each contributor signs their own entries.

Phase 24. The grid, worked

An application with three independent claims and eleven dependents; four candidates.

[ ] Claim 1. Conceived by engineer A, corroborated by a dated design memo predating any other document. Engineer A alone.
[ ] Claim 8, depending from claim 1, adding thermal isolation. The feature appears first in a consultant's meeting notes, three weeks before any internal document. Engineer B implemented it. The consultant conceived it; engineer B reduced it to practice, which is not inventing.
[ ] Claim 12, an independent claim added by amendment to capture a competitor's product. Drafted by counsel from the specification, but the idea traces to engineer B's notebook. Engineer B.
[ ] The programme director. Assigned the problem, funded the work, reviewed results. Not an inventor.
[ ] Aggregate: engineers A and B and the consultant, as a union across claims.
[ ] The finding that matters: the consultant never signed an assignment, which converts a conclusion into an emergency under 35 U.S.C. § 262.
[ ] What the filing grid would have missed: claim 12 did not exist then. The re-check at allowance caught it.
[ ] Time spent: ninety minutes plus fifteen. Against a correction proceeding under litigation pressure, the cheapest work in the file.

Phase 25. Assignment clause reference

Language that works, and the language it replaces.

| Defective | Replacement | |---|---| | "Employee agrees to assign all inventions to Company." | "Employee hereby assigns to Company all right, title, and interest in and to all Inventions." | | "Inventions made during employment." | "Inventions conceived or reduced to practice, alone or with others, during the period of employment and for [period] afterwards where derived from Confidential Information or work performed for Company." | | Silence on pre-agreement work | "Employee hereby assigns all Inventions conceived before the date of this Agreement relating to Company's business, listed in Exhibit A or, if no exhibit is attached, none are excluded." | | Silence on further assurances | "Employee will execute all documents Company reasonably requests to perfect, record, and enforce the assigned rights, and irrevocably appoints Company as attorney-in-fact to execute such documents if Employee is unavailable." | | Contractor statement of work silent on inventions | A full present assignment clause in the master agreement, not the statement of work, plus confirmatory assignments per filing. | | Reliance on an institutional policy | An executed present assignment from the individual, in addition to the policy, since policy wording decides ownership and the wording may not be an assignment at all. | | "Company shall own all work product." | An express present assignment of intellectual property rights, since an ownership recital is not a conveyance. |

[ ] Run every template through this table.
[ ] Confirm the assigning individual, not only the employer entity, is bound where a contractor's staff perform the work.
[ ] Confirm the assignee named is the entity that will hold the patents, not a predecessor or an affiliate.

Phase 26. Evidence request, written in advance

Draft once so it can be sent unchanged when an inventorship question arises.

[ ] Invention disclosure forms and attachments for the patent family.
[ ] Prosecution history, including all claim amendments and the claims as filed.
[ ] The inventorship analysis at filing and at allowance, if any exists.
[ ] Executed assignments for every named inventor, with recordation confirmations.
[ ] Agreements for every person listed on the disclosure forms, including outside parties.
[ ] Laboratory notebooks, design memoranda, and design review materials for the relevant period.
[ ] Message archives of every person on the disclosure form, for the conception window.
[ ] Version control history for any software or firmware element.
[ ] Meeting records attributing ideas to individuals.
[ ] Any prior employer agreements disclosed by contributors.
[ ] Any prior claim of contribution made by a current or former employee, and the company's response.
[ ] Recordation records from the office, reconciled against the internal file.

Why this belongs here. Half of these do not exist in retrievable form at most companies, and the week an omitted inventor surfaces — or the week a defendant raises the point — is the worst possible time to learn that the message archives were purged on the standard schedule.

Phase 27. Organization-type boxes

Run the base checklist, then the boxes for the organization in play.

Startup, pre-Series B.

[ ] Founders' pre-incorporation inventions assigned to the current entity, not a predecessor or an LLC that was dissolved.
[ ] The standard employment agreement checked for promise-to-assign language, which is common in templates copied from earlier ventures.
[ ] Advisors and part-time consultants, who are numerous at this stage and rarely papered.
[ ] Every contractor engaged through a marketplace or agency, where the agency's terms may assign to the agency rather than the client.

Company with a research collaboration.

[ ] A joint inventorship review procedure written into the collaboration agreement, with a named decision-maker per party.
[ ] Institutional policy text obtained for each academic participant, in force at the time.
[ ] Federal funding status confirmed, since it changes the obligations and was the Board of Trustees of Stanford v. Roche fact pattern.
[ ] Students and postdoctoral researchers identified separately from faculty.

Company with an active licensing programme.

[ ] Grid every patent in the programme before the next assertion, because a defendant will.
[ ] Confirm no named inventor lacks a recorded assignment, since that is the Ethicon v. United States Surgical opening.
[ ] Confirm all co-owners are contractually obliged to join enforcement.

Company that has made acquisitions.

[ ] Chain verified from original inventors through every intermediate entity.
[ ] Acquired disclosure forms compared against acquired patents' named inventors.
[ ] Retention of the acquired entity's engineering records confirmed, since migrations destroy them.

Manufacturer with supplier engineering involvement.

[ ] Supplier engineers identified on disclosure forms, since they are a recurring source of unassigned contribution.
[ ] Supplier agreements checked, noting they usually assign to the supplier.
[ ] Joint development with a supplier papered as such, rather than treated as procurement.

Phase 28. The ninety-day programme

[ ] Days 1-10. Rebuild the disclosure form around Section B. Add the outside-contributor routing rule. Amend the retention schedule and the departure exclusion.
[ ] Days 11-25. Assignment population audit — everyone who has plausibly contributed in ten years, with the four questions.
[ ] Days 20-45. Confirmatory present assignments obtained and recorded for everyone reachable. Gaps documented with scope.
[ ] Days 30-50. Fix the templates: present-tense language, further assurances, power of attorney, pre-agreement work, state limitations.
[ ] Days 45-70. Grid the highest-value issued patents retrospectively — those in a licensing programme or likely to be asserted — while nothing is adverse.
[ ] Days 60-80. Correct what needs correcting: 37 C.F.R. § 1.48 where applications are pending, 35 U.S.C. § 256 by agreement where issued.
[ ] Days 80-90. Docket the allowance re-check as a standing task. Name an owner. Calendar the annual review. Report the one number.

What is deliberately deferred. Gridding the entire back catalogue, which is a long tail with diminishing returns. Prioritize by commercial significance, and accept that patents nobody will ever assert do not need the analysis.

Phase 29. Quarterly metrics

Six numbers, tracked and reported alongside the portfolio.

[ ] Applications filed with a completed claim-by-claim grid, as a proportion. Target: all of them.
[ ] Notices of allowance with the re-check performed, as a proportion. This is the metric that lapses first.
[ ] Disclosure forms naming an outside party, and how many were routed to legal before filing.
[ ] Named inventors without a recorded present assignment. Target: zero. Run it against recordation records rather than the internal file, because the two diverge.
[ ] Patents with more than one owner of record and no joint ownership agreement. Each one is an asset worth materially less than the schedule suggests.
[ ] Departing inventors whose message archives were preserved, as a proportion of departures. This measures whether the retention exclusion is actually operating, and it is the control most likely to fail silently during a platform migration.

Report the composite once a year: the proportion of the portfolio for which the company can produce, on request, a claim-by-claim inventorship analysis and a recorded assignment for every named inventor. That is the figure an acquirer will eventually test, and it is the only meaningful measure of whether any of this is running.

Phase 30. The one-page brief for engineering leadership

Give this to research and engineering managers once a year. Ten minutes, and it prevents most of what this checklist exists to fix.

[ ] Inventorship is about who first had the specific idea, not who did the most work. Building it, testing it, and making it work is reduction to practice, and reduction to practice is not inventing.
[ ] It is decided claim by claim. Contributing to one dependent claim makes someone an inventor of the whole patent, which is why a consultant who attended two meetings can end up on the list.
[ ] Directing, funding, and choosing the problem are not conception. This is the rule that surprises managers, and it applies regardless of how essential the direction was.
[ ] Write down who said what, when, and where it is recorded — at the time. A note saying "Jane proposed the thermal isolation approach, 14 March, memo DM-207" is worth more four years later than anyone's memory of the project.
[ ] Tell legal about anyone outside the company who was in the room. Consultants, suppliers, academics, customers. This is the single most important thing on the page.
[ ] Do not delete a departing colleague's messages if they are named on any patent or disclosure form.
[ ] If you think you contributed and are not named, say so early. It is a correction while the application is pending and a much harder problem after.

Key Authorities at a Glance

| Authority | Proposition | |---|---| | 35 U.S.C. § 100 | Inventor and joint inventor defined | | 35 U.S.C. § 101 | "Whoever invents" | | 35 U.S.C. § 102 | Prior disclosure captured on the same form | | 35 U.S.C. § 115 | Inventor's oath or declaration | | 35 U.S.C. § 116 | Joint inventors; one claim suffices | | 35 U.S.C. § 135 | Derivation proceedings | | 35 U.S.C. § 256 | Correction; saving clause | | 35 U.S.C. § 261 | Assignment and recordation | | 35 U.S.C. § 262 | Joint owners may license without accounting | | 35 U.S.C. § 41 | Maintenance fee allocation | | 37 C.F.R. § 1.48 | Correction during prosecution | | 37 C.F.R. § 1.63 | Declaration requirements | | Burroughs Wellcome v. Barr Laboratories | Conception defined | | Pannu v. Iolab | Joint inventorship factors | | Hess v. Advanced Cardiovascular Systems | State-of-the-art explanation | | Fina Oil & Chemical v. Ewen | Collaboration requirement | | Dana-Farber v. Ono Pharmaceutical | Unequal contributions | | Trovan v. Sokymat | Claim-by-claim determination | | Sewall v. Walters | Conception as touchstone | | Ethicon v. United States Surgical | Co-owner licence defeats suit | | Stark v. Advanced Magnetics | Broad reading of Section 256 | | Vapor Point v. Moorhead | Equitable considerations | | Shukh v. Seagate Technology | Reputational standing | | Thaler v. Vidal | Natural person requirement | | FilmTec v. Allied-Signal | Present versus promised assignment | | Board of Trustees of Stanford v. Roche | Later present assignment prevails | | Omni MedSci v. Apple | Policy language decides ownership | | 18 U.S.C. § 1836 | Trade secret alternative |

The five things people get wrong

Asking who worked on it rather than who conceived it. The engineer who spent eight months making it function is frequently not an inventor, and the person who described the approach in one meeting frequently is. Reduction to practice is not invention, and no amount of effort converts it into one.

Treating inventorship as a whole-patent question. It is determined claim by claim and then aggregated as a union, so a contribution to a single dependent claim makes someone a joint inventor of the entire patent under 35 U.S.C. § 116 — with everything that follows under 35 U.S.C. § 262.

Never re-checking at allowance. Claims added or amended during prosecution can have a different inventive entity, and the fifteen-minute re-check is the difference between an administrative correction under 37 C.F.R. § 1.48 and a negotiation conducted years later under pressure.

Leaving promise-to-assign language in the agreements. "Agrees to assign" creates an obligation that a later present assignment can defeat. This single drafting defect turns every inventorship question into an ownership question, and it is still in wide circulation.

Letting the retention schedule destroy the conception evidence. It is needed in year twelve and purged in year three, usually when a departing inventor's mailbox is deleted on the standard timetable. Excluding named inventors' archives is a one-line change that decides cases.