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generated through brainstorming cannot always be accurately attributed. . . . H.R. 4527 would eliminate the need for making these sometimes chancy, complex and time-consuming determinations by specifying that joint inventors need not have contributed jointly to each claim in an application. As we understand the provision, inventors would also be regarded as joint inventors whether or not they physically worked together at the same place or at the same time in developing the invention. Further, joint inventorship would not require that each inventor make the same type or amount of contribution to the invention or that each make a contribution to the subject matter of each claim of the patent.200 The Commissioner was mistaken in asserting that the amendment would “eliminate” the need to make a determination of inventive contribution, because, after the amendment, the applicants would still have to determine whether each collaborator listed as an inventor had made the threshold contribution to conception. The amendment would, however, create a more uniform standard and lower threshold for qualifying as a joint inventor, which would reduce the risk of nonjoinder and misjoinder. Identical statements were made by the Commissioner of Patents before the Senate Judiciary Committee. 201 Industry representatives also testified overwhelmingly in favor of the amendments. 202 Representatives of industries in which collaborative research is extremely common if not critical to commercial success, such as industrial chemicals and pharmaceuticals, supported the bill on these grounds. The American Chemical Society’s letter of support asserted: The proposed modification of Section 116 of 35 U.S.C. is appropriate and just, for it recognizes that much research that results in an invention is conducted on a team basis. Team members may each contribute to a significant stage of the research, but seldom does each 200
Statement of Gerald J. Mossinghoff, in id. at 28-29. See Patent Law Improvements Act, Hearing before the Subcomm. on Patents, Copyrights and Trademarks of the Comm. on the Judiciary, U.S. Senate, 98th Cong., 2d Sess., on S.1535 and S. 1841 (Apr. 3, 1984), Serial No. J-98-107, at 18, 32-34 (Mossinghoff), 70 (AIPLA) [hereinafter “Senate Judiciary Comm. PLAA Hearings”]. 202 E.g., 130 CONG. REC. 28,075 (1984) (statement of Rep. Moorhead); see W. Fritz Fasse, The Muddy Metaphysics of Joint Inventorship: Cleaning Up After the 1984 Amendments to 35 U.S.C. § 116, 5 HARV. J.L. & TECH. 153, 175 (1992). 201