A Practical Approach to Inventorship H. Sanders Gwin, Jr. Shumaker & Sieffert, P.A. 651-286-8361 (Tel.) 651-735-1102 (Fax) gwin@ssiplaw.com
Outline Part I: Part II: Part III: The Law of Inventorship Conducting an Inventorship Determination Case Studies - Who Are The Inventors?
Part I: The Law of Inventorship
Conception = Invention CONCEPTION IS THE TOUCHSTONE OF INVENTION
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
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?
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
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 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 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 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 Joint One person responsible for conception 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 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 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 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
Part II: Conducting an 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 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 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 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 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 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 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 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 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)
Part III: Case Studies: Who Are The Inventors?
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 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 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 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 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 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 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 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 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 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 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 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?