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Outline. Part I:The Law of Inventorship. Part II:Conducting an Inventorship Determination. Part III:Case Studies - Who Are The Inventors?. Part I: The Law of Inventorship. Conception = Invention CONCEPTION IS THE TOUCHSTONE OF INVENTION. Conception.

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Outline

Outline

Part I:The Law of Inventorship

Part II:Conducting an Inventorship Determination

Part III:Case Studies - Who Are The Inventors?


Outline 5763712

Part I:

The Law of Inventorship


Conception invention conception is the touchstone of invention

Conception = InventionCONCEPTION IS THE TOUCHSTONE OF INVENTION


Conception

Conception

“Formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice”

“The Invention” Means Subject Matter Set Forth in Properly Construed Claims


Conception1

Conception

TESTS FOR CONCEPTION:

  • Did Inventor Identify Problem to be Solved, or Determine Solution to Known Problem?

  • Did Inventor have an Idea/Solution that was Definite and Permanent Enough that One Skilled in the Art Could Understand it Without Extensive Additional Research/Experimentation?


Conception2

Conception

PROVING CONCEPTION

  • Corroborating Evidence Required

  • Rule of Reason – Evidence Considered in Context, Fact-Finder Must Make Credibility Determination

  • Contemporaneous Disclosure Preferred

  • Need Only Show Complete Mental Picture and Describe Invention with Particularity – Scientific Certainty Not Required

  • Must be Sufficiently Developed to Fully Describe invention to One of Ordinary Skill in the Art

  • Completed Thought Expressed in Clear Terms to Enable Skilled Artisans to make/use invention without undue further experimentation or research


Conception3

Conception

  • Mechanical/Electrical inventions

    Drawing/circuit diagram

  • Software

    Flow Charts

  • Chemical

    Structure, Name, Formula, Chemical/Physical property, Utility, Method of Making (unless routine)

  • Biotech

    Sequence (or other structure), Utility, Method of Obtaining or Making


Reduction to practice

Reduction to Practice

Must Show Invention in Physical/Tangible form

  • Actual

    Build Prototype

    Conduct Successful Experiments

    Prove Invention Works to a Scientific Certainty

  • Constructive

    File patent application

    Disclosure Meets Requirements of Section 112


Reduction to practice1

Reduction to Practice

  • NOT as important as conception, unless art highly unpredictable (chemical/biotech), may in such cases be simultaneous

  • Can be carried out by the inventors or others working under their direction and control

  • Were problems encountered during the actual reduction to practice?

    • Did investigators offer suggestions/ideas leading to an operative invention?


Factors tending away from inventorship

Factors Tending Away From Inventorship

  • Contribute Obvious Element or Making Superficial Changes to Another’s Design

  • Suggest Desired Result – No Means to Accomplish it

  • Following Instructions of Conceivers

  • Explaining How/Why Invention works

  • Explaining State of the Art or Providing Well Known Principles or Known Component/Starting material


Sole inventorship and joint inventorship

Sole Inventorship and Joint Inventorship

Sole

  • One person responsible for conception

    Joint

  • Two or More People Collaborate and Contribute to the Joint Arrival of a Definite and Permanent Idea of the Invention

  • Collaboration Essential

  • Direct or Indirect (via intermediary)


Sole inventorship and joint inventorship1

Sole Inventorship and Joint Inventorship

  • Joint inventors do not have to:

    • work together or at the same time

    • make the same type or amount of contribution

    • contribute to every claim

  • However:

    • Each Inventor Must Contribute to the Joint Arrival at the Definite and Permanent Idea of the Invention as it Will be Used in Practice

    • Contribution Must be Significant When Measured Against the Dimension of the Full Invention

    • Basic Exercise of Ordinary Skill Insufficient

    • Contribution Must be Non-Obvious


Sole inventorship and joint inventorship2

Sole Inventorship and Joint Inventorship

  • Joint Inventors are Joint Owners - Co-inventor of one claim has a pro rata undivided ownership interest in all claims

    • Co-inventor of only one claim might gain entitlement to ownership of a patent with dozens of claims

  • Standing to sue - each joint owner must join all the other co-owners

    • One co-owner has the right to limit the other co-owner’s ability to sue infringers by refusing to join voluntarily in patent infringement suit


Sole inventorship and joint inventorship3

Sole Inventorship and Joint Inventorship

  • Assessment of Prior Art

    • Earlier work of A may be prior art to later work of A and B

  • Ability to Claim Priority

    • Continuation or foreign application


Outline 5763712

Part II:

Conducting an Inventorship Determination


Inventorship determination

Inventorship Determination

  • Only true and original inventors may apply

  • Original inventor uses ideas from own thinking rather than someone else’s

  • Attorney/Agent’s primary role in inventorship determination:

    Determine whether each inventor reasonably “believes himself to be the original and first inventor”


Suggested inventorship determination process

Suggested Inventorship Determination Process

On-going Client Education

a)Importance of having correct inventorship

b)Legal determination made by qualified practitioner

c)Not the same as authorship

d)Does not reflect quality, value or amount of contribution

e)Is based on the claims

f)Inventorship basics

g)The process that is used


Suggested inventorship determination process1

Suggested Inventorship Determination Process

  • Make determination after the entire application and claims have been prepared

  • Compare contributions of possible inventors to claims –

    INVENTORSHIP IS BASED ON THE CLAIMS

  • Interview possible inventors

    a)As a group?

    b)Separately?

    c)Both?

    d)Look for consistency and credibility in explanations

    e)Be wary of “suspect” inventors


Suggested inventorship determination process2

Suggested Inventorship Determination Process

  • Review documentary evidence as needed

    • Notebooks, invention records, reports, diaries, etc.

  • Look for corroborating evidence to resolve conflicts, as needed

  • Make final inventorship determination

    • Can it be easily explained and defended?

    • If alternative determinations are possible, has the most

      justifiable one been selected?

  • Record results in a file memo

  • Advise client of possible staff conflicts


Questions for determining inventorship

Questions for Determining Inventorship

  • Why did you develop this invention?

  • How did you learn of the problem that you have solved?

  • What background information did you have at the start and where did it come from?

  • When and where was the invention developed?


Questions for determining inventorship1

Questions for Determining Inventorship

  • Describe how the invention was developed and tested - who was involved? What did you do?

  • Did you work with anyone else or receive suggestions, ideas or recommendations from anyone else? Who? What did that person do? When did that person become involved?


Questions for determining inventorship2

Questions for Determining Inventorship

  • Do you have any records describing the work that was done?

    • If no, then why not?

  • Has the invention been reduced to practice?

    • Who did this? When? Where? How?

  • Were any problems encountered while reducing the invention to practice?

    • If so, describe the problems, how they were solved, and who solved them.


Questions for determining inventorship3

Questions for Determining Inventorship

  • Do you believe that you should be named as an inventor?

    • Why or why not?

  • Do you believe [name of possible co-inventor] should be named as an inventor?

    • Why or why not?


Questions for determining inventorship4

Questions for Determining Inventorship

  • Try to Eliminate “Legal” Terms

    • Inventorship Discussions

    • Invention Disclosure Form

  • “Inventor(s)” (“Investigators” is a better term)

  • “Conception” (Ask instead: “Describe when the invention was first thought of or written down”)

  • “Reduction to practice” (Ask about experiments or tests instead)

  • Prior art (“Background information” is a better term)

  • Best mode” (Ask if the investigators have a preferred design or process)


Outline 5763712

Part III:

Case Studies:

Who Are The Inventors?


Who are the inventors case study no 1

Who Are The Inventors?Case Study No. 1

  • Five people were in a meeting

  • An invention was conceived

  • No one remembers who said what/when

  • There is no written evidence


Comments on case study no 1

Comments on Case Study No. 1

  • Are all five people subject to an obligation of common assignment?

  • Is there agreement or disagreement among the five people as to what happened?

  • Are any of the five people “suspect?”

  • Foster additional collaboration?


Who are the inventors case study no 2

Who Are The Inventors?Case Study No. 2

  • A and B were considered during the inventorship determination

  • You determine that B is the sole inventor

  • B still believes that A is/is not an inventor


Comments on case study no 2

Comments on Case Study No. 2

  • Can B sign an oath or declaration in good faith?

  • What is B’s motivation for wanting to include/exclude A?

  • What is A’s motivation to be on the patent?

  • Be prepared to explain process and decision

  • If you decide A is not an inventor

    • Advise client to recognize A’s efforts too

    • Advise client that internal conflict may result


Who are the inventors case study no 3

Who Are The Inventors?Case Study No. 3

  • C conceived an invention and reduced it to practice

  • 6 months later D independently conceived and reduced to practice substantially the same invention


Comments on case study no 3

Comments on Case Study No. 3

  • Did D add anything to C’s work?

  • Can this new subject matter be claimed in this or a separate patent application?

  • What happened in the intervening six months?

  • Foster collaboration?

  • What if the time difference was 1 year?

    • 2 years?

    • 10 years?


Who are the inventors case study no 4

Who Are The Inventors?Case Study No. 4

  • G and H are named as inventors in a FILED patent application

  • After filing, J says he’s an inventor too because he provided H with a new part that he designed

    • part is claimed in a number of dependent claims in the application

  • J’s notebook does not show this, H denies it, and G claims no knowledge of it

  • You believe that J is a inventor and, fear G, H are not being forthcoming


Comments on case study no 4

Comments on Case Study No. 4

  • Should the bar be raised once the patent application has been filed?

  • Generally, No

  • What is the basis for J’s claim? Is it credible?

  • Which outcome is most easily defended?

  • Alert client to a possible internal conflict


Who are the inventors case study no 5

Who Are The Inventors?Case Study No. 5

  • K, L and M are inventors on a patent application; Q was considered but not named

  • After filing, Q complains

  • Meeting with senior legal and R&D staff confirms the initial inventorship but also shows:

    • There were credible arguments for naming Q

    • Claims to Q’s contribution could have been drafted


Comments on case study no 5

Comments on Case Study No. 5

  • Could you draft claims to include Q in this or a related application?

  • When drafting claims, Anticipate the organizational consequences of your decisions

  • Don’t ignore opportunities to be inclusive when doing so will not compromise your client’s rights


Who are the inventors case study no 6

Who Are The Inventors?Case Study No. 6

  • Professor suggested to Student Compound X, Professor drew structure

  • Student synthesized Compound X according to Professor’s synthetic strategy


Comments on case study no 6

Comments on Case Study No. 6

  • Chemical compound conception requires structure, name, formula, chemical or physical property, utility and method of making (if not routine)

  • Evidence that Professor Conceived All of the Above?

  • Evidence Any Conceived by Student?


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