Legally, an inventor is anyone who has contributed to the conception (not the realization) of what is claimed as the invention you wish to protect. So, if an employee conceived of Feature 4, but you only wish to Patent Features 1-3 and 5, the inventor does not need to be listed in the patent application. In general, however, it’s good practice to list everyone that has made a contribution to the conception of the invention.
When a first co-founder provides all of the ideas for the invention, and the second co-founder performs the steps in making the ideas into a developed app, the patent application should only list the first co-founder as an inventor.
If the founders conceived of the ideas for the invention but hired employees/contractors to develop the app, only the founders should be listed as inventors.
If an employee provides an idea for the invention, but his employer provides all of the resources and financial support in realizing the invention, the employee must be considered an inventor. However, in this scenario, the employee may be obligated by Employment Contract to assign his patent rights for the invention to his employer. In this instance, the employer may be considered an ‘assignee’ of the invention and will own all of the rights to the invention. The employee’s listing as an inventor will merely be a formality.
You can read our latest blog article on assignments here: Who can be considered an inventor on my patent application?
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal