Prevent faculty disputes from turning into a declaration of war
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Prevent Faculty Disputes From Turning Into a Declaration of War. Chester A. Bisbee, Ph.D., J.D. Jean C. Baker, Ph.D., J.D. Introduction. Who are we and why do we care about inventorship? This presentation: legal analysis real world commentary. Why Is Correct Inventorship Important?.

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Prevent Faculty Disputes From Turning Into a Declaration of War

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Prevent Faculty DisputesFrom Turning Into a Declaration of War

  • Chester A. Bisbee, Ph.D., J.D.

  • Jean C. Baker, Ph.D., J.D.


Who are we and why do we care about inventorship?

This presentation:

legal analysis

real world commentary

Why Is Correct Inventorship Important?

Legal Issues

Unenforceable - Intentionally listing incorrect inventors can render the patent unenforceable due to inequitable conduct.

Expensive – Sorting out inventorship can result in costly litigation.

Dangerous – Incorrect inventorship can result in unnamed inventors (who can prove they are inventors) licensing the entire invention without the knowledge or consent of the other inventors/owners.

Why Are Universities and Research Institutions Unique?

Internal Issues

Academics are their own bosses.

Faculty disputes (not related to the matter at hand can have long-lasting and far reaching consequences).

Money, Money: Named inventors can have strong financial incentive.

"Inventorship" can seem, to academics, like "authorship".

Why Are Universities and Research Institutions Unique?

External Issues

The type of inventions that universities tend to produce are the most difficult to review for inventorship.

Ownership issues (lots of collaboration).

Informal nature of development and informal contacts with "outsiders".


Inventor(s) does not acknowledge the contribution of others.

Inventor(s) attempts to hide the existence of additional Inventor(s).

Inventor(s) substitutes important individual(s) as Inventor(s)

Who is an "Inventor"?

An inventor conceives the invention or contributes to the reduction to practice of the invention

The contribution must be intellectual

What is "Conception"

Conception is "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice"*

*Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973); MPEP 2138.04; Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001.

What is "Conception"

"[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill."

What is "Conception"

Conception is shown when a party shows possession of every feature recited in the claim, and every limitation of the claim was known to the inventor at the time of the alleged conception.

Conception must be proven by corroborating evidence.*

*Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367, 1376, 231 USPQ 81, 87 (Fed. Cir. 1986).

What is NOT Conception?

An inventor does not have to reduce the invention to practice (i.e., actually make it work).*

An inventor must contribute more than an idea of a result to be accomplished. An inventor must contribute the means of accomplishing the desired outcome.¤

This distinction has been a significant issue in JCB's practice.

*Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1986).

¤Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).

What is NOT Conception?

" It is not essential for the inventor to be personally involved in carrying out process steps where implementation of those steps does not require the exercise of inventive skill"*

*In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982).

University Example

Inventor's "hope" that a genetically altered yeast would produce antigen particles having the particle size and sedimentation rates recited in the claims did not establish conception, since the inventor did not show that he had a "definite and permanent understanding" as to whether or how, or a reasonable expectation that, the yeast would produce the recited antigen particles.*

*Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001).

What is an "Intellectual Contribution"

Any contribution that is "not insignificant in quality when measured against the dimension of the full invention."*

Any intellectual contribution appreciated as significant by the inventor; it can't be unrecognized or accidental.

*Pannu v. Iolab Corp. 155 F.3d 1344, 1351, 47 USPQ2d 1657 (Fed. Cir. 1998).

What is NOT an "Intellectual Contribution"

discovery of a problem, but not the solution.

routine skill

explaining or providing the state of the art

What is NOT an "Intellectual Contribution"

supplying product for use in the invention

derivation (the complete conception of the invention and communication of that conception to another*) of the invention is not inventorship¤

* Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).

¤ 35 USC 102f


Real-life case showing what can happen when these ideas get confused

An Inventor Can Have Help

An inventor can use ideas, suggestions and materials from others and still be an inventor.

An Inventor Can Have Help

"In arriving at conception [the inventor] may consider and adopt ideas and materials derived from many sources [such as] a suggestion from an employee, or hired consultant so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes, even if such suggestion [or material] proves to be the key that unlocks his problem."*

*Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).

Who Is NOT an Inventor?

One following oral instructions is viewed as merely a technician.

A skilled mechanic carrying out the details of a plan devised by another.

Differentiating between one making an intellectual contribution and one acting as a skilled mechanic can be difficult.

Who is a Joint Inventor?

Joint Inventors are two or more collaborators who*:

each generally contribute to the conception of the invention.

exhibits "some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting.¤

* Fritsch v. Lin, 21 USPQ2d 1737, 1739 (Bd. Pat. App. & Inter. 1991).

¤ Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-917, 23 USPQ2d 1921, 1925-1926 (Fed. Cir. 1992).

A Joint Inventor Can*

work in a different physical location and at different (although overlapping) time.

make a different type or amount of contribution.

make a contribution to the subject matter of only one claim of the patent.¤

arrive at the inventive concept at a different time.±

* 35 USC 116

¤ Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 1998). (The electronics technician who contributed to one of the two alternative structures in the specification to define "the means for detaining" in a claim limitation was held to be a joint inventor.)

± Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960).

Who is NOT a Joint Inventor?

one who made the necessary contribution during a separate, non-overlapping period of time.

an author of a paper who did not make the necessary contribution.

an inventor in a corresponding foreign application that did not make the necessary contribution.

a patent attorney or tech transfer office employee just "doing their job"*

* Solomon v. Kimberly Clark, 216 F.3d 1372 (Fed. Cir. 2000).

How Can You Document Joint Inventors in Team Setting?

Bound lab notebooks always the best practice

Sticky pad solution: give each team member a different color paper and have all ideas written down, dated and collected after each meeting

Depend on separate recollections.

Grant Proposal often useful

University of Pittsburg vs. Hendrick

Typical fact pattern for Universities

University of Pittsburg of Commonwealth System of Higher Educ. v. Hedrick, 573 F.3d 1290 (2009).

Practical Advice: How do you identify an inventor?

Ask Questions

What did he or she contribute?



Practical Advice: How do you identify and inventor?

Request written documentation because testimony of inventor and patent attorney given little probative value*

Lab Notebooks

Grant Proposals

Publications and Manuscripts

* Solomon v. Kimberly Clark, 216 F3d. 1372 (Fed. Cir. 2000).

What Role do Tech Transfer Personnel Play in Determining Inventorship?

Knowledge of inventor’s work

Knowledge of inventor’s lab

Who did what?

What claims are each inventor responsible for?

Who has assigned and who needs to?

What is Documentation?

Lab notebook (or electonic equivalent)

Writings (articles, posters, abstracts)

Presentations (powerpoint)

What is the Effect of Inventorship on Ownership?

Inventorship is NOT ownership

An owner is not necessarily an inventor.

Inventors "own" 100% of the invention, but usually assign their ownership rights to another party (i.e., employer).

Owners can sell or license the invention and can sue to prevent others from MAKING, USING, or SELLING the invention. An inventor who is not an owner (i.e., has assigned their rights to another) has no such rights.

Who Is An Owner?

Does inventor have an obligation to assign?

Special University Problems with Ownership

"Wisconsin Style"

IP going out the “back door”

Joint university-company ownership

Start-up problems

The mysterious CIP

How Can Ownership Be Changed?

Are there additional co-inventors?

Has inventorship changed?

What is the Effect of Inventorship on Licensing?

Who can license the application?

What is the Effect of Contracts on Inventorship/Ownership?

Employment agreements

Sponsored research agreements

Confidential disclosure agreements

Who Determines Inventorship?

When are outside counsel useful and when are they not useful?

Not useful

Mediate faculty disputes and help tech transfer maintain internal relations


Be the "hired gun" and apply legal analysis

"Draw fire"

Who Can Change Inventorship?



When Can Inventorship Be Changed?

When error was made without deceptive intent (don't have to prove "no deceptive intent").

Inventorship designated to avoid prior art can't be changed

Inventorship designated to avoid priority dispute can be changed

When Can Inventorship Be Changed?

If parties agree:

Before the Declaration is filed

What is the role of the Application Data Sheet on inventorship?

While the application is pending (requires all parties agree that inventors need to be changed)

File a request for Certificate of Correction under 37 CFR 1.48a

When Can Inventorship Be Changed?

If parties agree:

After allowance/issuance

File Certificate of Correction under 37 CFR 1.324

When Can Inventorship Be Changed?

If Parties do NOT agree

Before issue

File a request for Certificate of Correction under 37 CFR 1.48a with a petition under 37 CFR 1.183 to waive the requirement for a re-executed oath or declaration.

File a continuation application

When Can Inventorship Be Changed?

If parties do NOT agree

After Issue

File reissue application

File declaratory judgement

Provoke an interference under 37 CFR 41.202(a) within one year of issuance

What Happens When an Inventor is Unavailable?

Deceased Inventors

Legal heirs/administrators must be found and documented to USPTO (unless valid assignment executed prior to death)

Incapacitated Inventors

What Happens When an Inventor is Unavailable?

Missing Inventors

Uncooperative Inventors

Any Questions?Jean C. Baker, Ph.D, J.D.414.277.5709 – [email protected] Bisbee, Ph.D., J.D.631.632-9009 – [email protected]

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