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  1. 1. INVENTORSHIP NAPP® 2009 The Nuts & Bolts of Patent Prosecution Practice July 18, 2009 Presented by: Stan Antolin Smith Moore Leatherwood LLP 300 N. Greene Street, Suite 1400 Greensboro, NC 27401 T: 336-378-5200 F: 336-378-5400 © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.
  2. 2. Special Thanks to . . . Sharon J. Adams, Esq. for providing the materials that served as the basis of this presentation.
  3. 3. Applicant as Inventor “The requirement that the applicant for a patent be the inventor is a characteristic of U.S. patent law not generally shared by other countries.” MPEP 2137.01
  4. 4. In U.S. – Must Have Correct Inventors In Patent Application – • 35 USC 102: “A person shall be entitled to a patent unless – (f) he did not himself invent the subject matter sought to be patented…”
  5. 5. In U.S. – Must Have Correct Inventors In an Issued Patent – •35 USC 256 Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
  6. 6. In U.S. – Must Have Correct Inventors In an Issued Patent – •35 USC 256 The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.
  7. 7. Inventorship Must Be Correct For Infringement Lawsuit “An action for infringement must join as plaintiffs all co-owners.” Ethicon, Inc. V. United States Surgical Corp., 135 F.3d 1456, 1467 (Fed. Cir. 1998)
  8. 8. Inventor Interview 1. Assessing the client. 2. Who is the inventor? 3. Who is the owner? 4. What is the invention?
  9. 9. Assessing The Client An art form; If you think it’s not going to work out, it probably won’t; Free consultation?
  10. 10. Assessing The Client Why is client seeking invention? License to others; Manufacture and produce; Already in market; Defensive patent; Vanity patent.
  11. 11. Assessing The Client Conflicts check Other clients; Technology.
  12. 12. What Is The Invention? Only take cases in areas where you are technologically competent.
  13. 13. What Is The Invention? Practitioner must understand the invention.
  14. 14. What Is The Invention? Bar dates! Possible imminent publications? Tape record interview? Take notes. Make drawings.
  15. 15. Who Is The Owner? Inventors automatically own patent. However, employers may have rights to the invention through employment agreement, or by operation of law.
  16. 16. Who Is An Inventor? Conception Maintain Intellectual Dominion Reduction To Practice Joint Inventors Derivation
  17. 17. Conception The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention he [or she] is not an inventor. “One must contribute to the conception to be an inventor.” In re Hardee, 223 USPQ 112, 1123 (Comm’r Pat. 1994). MPEP 2137.01
  18. 18. Conception Biology/Chemistry Conception of genes, chemical compounds or new virus (FIV) only occurs only when virus is isolated, or the compound is reduced to practice. University of California v. Synbiotics Corp., 849 F.Supp. 40, 742 (S.D. Calif. 1994)
  19. 19. Maintain Intellectual Dominion Inventor may consider and adopt ideas and materials from many sources, such as employee or hired consultant, as long as inventor maintains intellectual domination of the work of making the invention down to the successful testing. Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).
  20. 20. Maintain Intellectual Dominion Adoption of the ideas and materials from another can become a derivation. New England Braiding Co. V. A. W. Chesterson Co., 970 F.2d 878, 883, (Fed. Cir. 1991).
  21. 21. Reduction To Practice There is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on the inventor’s behalf. In re DeBaun,687 F.2d 459, 463 (CCPA 1982).
  22. 22. Reduction To Practice 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. Fritsch v. Lin, 21 USPQ2d 1737, 1739 (Bd. Pat. App. & Inter. 1991).
  23. 23. Joint Inventorship Inventors may apply for a patent jointly even though: (1) They did not physically work together or at the same time, (2) Each did not make the same type or amount of contribution, or (3) Each did not make a contribution to the subject matter of every claim of the patent. 35 UCS 116; MPEP 2130.01; 37 CFR 1.45(b).
  24. 24. Joint Inventorship Must have some “quantum of collaboration or connection.” Kimberly-Clark Corp., v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992).
  25. 25. Joint Inventorship A co-inventor need not make a contribution to every claim of the patent. A contribution to one claim is enough. MPEP 2137.01. “For the conception of a joint invention, each of the joint inventors need not ‘make the same type or amount of contribution’ to the invention.” Ethicon, 135.F.3d 1456, 1460 (Fed. Cir. 1998) (quoting 35 U.S.C. §116).
  26. 26. Joint Inventorship Inventor must do more than suggest desired result or follow the instructions of another.
  27. 27. Joint Inventorship “Conception is the touchstone to determining inventorship.” Burroughs Wellcome Co. V. Barr Laboratories, Inc., 40 F.3d 1233, 1227 (Fed. Cir. 1994) The “critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.” Ethicon, 135 F.3d at 1460.
  28. 28. Joint Inventorship Question 1 Is there joint inventorship when one person conceives of the idea and another one reduces it to practice?
  29. 29. Joint Inventorship Question 2 If a person suggests a desired result, but not the means to accomplish the result, is that person an inventor?
  30. 30. Joint Inventorship “It is one thing to suggest that a better mousetrap ought to be built; it is another thing to build it.” Buildex Inc. V. Kason Industries, Inc., 665 F.Supp. 1021, 1025 (E.D. N.Y. 1987)
  31. 31. Joint Inventorship Question 3 Walters came up with improvement to his patent. Discussed the improvement with Sewall and Sewall helped in reducing to practice, and in doing so, developed the “best mode” identified in the patent. Is Sewall an inventor?
  32. 32. Joint Inventorship Question 4 – 55 total claims. Choi claimed to have invented 2. Claim 33 was for surgical trocar with blunt probe passing through hole in blade. Yoon conceived of blunt probe. Choi conceived of locating blunt probe in shaft and allowing it to pass through hole in blade. Is Choi an inventor?
  33. 33. Joint Inventorship Question 5 Drs. R and S were trying to develop a balloon angioplasty medical device. They were having problems with the balloon material and consulted with Mr. H, who suggested a material that they used in the patent. The material was known to those skilled in the art. Is Mr. H an inventor?
  34. 34. Joint Inventorship Question 6 Inventor P filed app for intraocular lenses to replace human eye lenses in cataract surgery. He subsequently met with L, who suggested a single piece of snag resistant plastic. P filed a C-I-P claiming the snag resistant plastic which resulted in a patent.. Is L an inventor?
  35. 35. Joint Inventorship Joint inventorship, each can develop and exploit without accounting to the other. 35 USC262 In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, without the consent of an without accounting to the other owners.
  36. 36. Derivation Where it can be shown that an applicant “derived” an invention from another, a rejection under 102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981)
  37. 37. Derivation Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention. Kilbey v. Thiele, 199 USPQ 290 294 (Bd. Pat. Inter. 1978) MPEP 2137
  38. 38. Identifying Inventors Contributions of named inventors should be evaluated after claims defining the invention are finalized. Inventorship may vary from claim to claim. Match persons to claim limitations.
  39. 39. Identifying Inventors Claim amendment may affect inventorship. Try to get all team members to agree who are the inventors. Need not have equal contributions.
  40. 40. Identifying The Inventor For The PTO In a non-provisional application the inventorship is as set forth in the oath or declaration. • 37 CFR 1.41(a)(1) • MPEP 605 In a provisional application the inventorship is as set forth in the cover sheet. • 37 CFR 1.41(a)(2) • MPEP 605
  41. 41. The Oath Or Declaration Must List Correct Inventors Neither more nor less than all of the inventors must make the required oath or declaration. 37 CFR 1.45(a)
  42. 42. Who Can File? The “Applicant”. • MPEP 605 • 37 CFR 1.41(b)
  43. 43. An Applicant Is Inventor – 35 USC 116 Assignee – 35 USC 118
  44. 44. Assignee: 35 USC 261 Subject to the provisions of this title, patents shall have the attributes of personal property. Applications for patents, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
  45. 45. Assignee: 35 USC 261 An assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
  46. 46. Assignee As Inventor “Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying the action, may make application for patent…” 35 U.S.C. § 118.
  47. 47. Joint Inventors: Not All Available “If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor.” 35 U.S.C. § 116.
  48. 48. Correction Of Inventorship By Amendment (37 CFR 1.48) Through Courts Through Reissue & Re-Exam Through Interference
  49. 49. Correction of Inventorship By Amendment (37 CFR 1.48) “Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.” 35 U.S.C. § 116.
  50. 50. Correction of Inventorship By Amendment (37 CFR 1.48) § 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. §116.
  51. 51. Correction of Inventorship By Amendment (37 CFR 1.48) (a) Non-provisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed §1.63 oath or declaration in a non- provisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the non-provisional application may be amended to name only the actual inventor or inventors.
  52. 52. Correction of Inventorship By Amendment (37 CFR 1.48) Amendment of the inventorship requires: (1) A request to correct the inventorship that sets forth the desired inventorship change; (2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
  53. 53. Correction of Inventorship By Amendment (37 CFR 1.48) Amendment of the inventorship requires: (3) An oath or declaration by the actual inventor or inventors; (4) The processing fee set forth in § 1.17(i); and (5) If an assignment has been executed, the written consent of the assignee.
  54. 54. Correction Of Invention Through Courts If error in inventorship is made without deceptive intent, the court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned. 35 USC 256
  55. 55. Correction Of Invention Through Courts Deceptive intent in failing to join an inventor would not permit correction of inventorship under section 256 and would invalidate the patent. MCV, Inc. V. King-Seeley Thermos Co., 870 F.2d 1568, 1571 (Fed. Cir. 1988)
  56. 56. Correction of Inventorship Reissue The correction of misjoinder of inventors has been held to be a ground for reissue. MPEP 1412.04
  57. 57. Correction Of Invention Re-exam Where the inventorship of a patent being reexamined is to be corrected, a petition for correction of inventorship which complies with 37 CFR 1.324 must be submitted during the prosecution of the reexamination proceeding. MPEP 2250.02 (No deceptive intent)
  58. 58. Correction of Inventorship Interference erstwhile pals & “their” invention • file identical application and claims • list correct inventor(s) – while pending or – within one year of the patent issue • request interference with regard to the original a.k.a. “originality case” - determines who made the invention instead of who made the invention first. Sewall v. Walters, 21 F.3d 411, 30 USPQ2d 1356 (Fed. Cir. 1994) (Rich, J.).
  59. 59. Standing Inventors Have Standing To Sue to Correct Inventorship, Even If They Have No Ownership Interest In Patent
  60. 60. Standing We conclude that an expectation of ownership of a patent is not a prerequisite for a putative inventor to possess standing to sue to correct inventorship under § 256. The statute imposes no requirement of potential ownership in the patent on those seeking to invoke it. We have previously interpreted § 256 broadly as a “savings provision” to prevent patent rights from being extinguished simply because the inventors are not correctly listed. Pannu v. Lolab Corp., 155 F.3d 1344, 1349, 47 USPQ 2d 1657, 1662 (Fed. Cir. 1998).
  61. 61. Standing The same considerations apply here. Chou should have the right to assert her interest, both for her own benefit and in the public interest of assuring correct inventorship designations on patents. The interests of both inventors and the public are thus served by a broad interpretation of the statute. Chou v. University of Chicago, 254 F.3d 1347 (Fed. Cir 2001).
  62. 62. Thank you Stan Antolin T: 336-378-5516 F: 336-433-7591 © 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.