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.
Part I: The Law of Inventorship
Part II: Conducting an Inventorship Determination
Part III: Case Studies - Who Are The Inventors?
The Law of Inventorship
“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
TESTS FOR CONCEPTION:
Structure, Name, Formula, Chemical/Physical property, Utility, Method of Making (unless routine)
Sequence (or other structure), Utility, Method of Obtaining or Making
Must Show Invention in Physical/Tangible form
Conduct Successful Experiments
Prove Invention Works to a Scientific Certainty
File patent application
Disclosure Meets Requirements of Section 112
Conducting an Inventorship Determination
Determine whether each inventor reasonably “believes himself to be the original and first inventor”
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
INVENTORSHIP IS BASED ON THE CLAIMS
a) As a group?
d) Look for consistency and credibility in explanations
e) Be wary of “suspect” inventors
justifiable one been selected?
Who Are The Inventors?