Extended technical arms

Fact situations which make a person a sole inventor and which make two or more persons joint inventors, in the eyes of the law, are discussed. The concept of joint inventorship is contrasted with situations where others are "extended technical arms of the inventor." Problems such as the synthesis of a new compound by a chemist and discovery of a utility by a person trained in another discipline are presented, including selection of an old compound by a chemist for testing or a particular utility and discovery of a related utility by another person. Observations are made on the likelihood of a patent being held invalid under different improper inventorship situations. 

When the chemist acts as an extended technical arm or when he outdistances the reach of the arm is discussed in an 1868 Supreme Court decision (2), which is still applicable ... 

Another old Supreme Court case (27) referred to the right of an inventor to use an extended technical arm. The court noted that to make an improved invention an inventor needs a considerable fund of knowledge, and where this fund is acquired before the invention is made those who imparted the fund to the inventor do not become joint inventors. During his experiments, the court said that an inventor seeks and secures a point from one scientist, another point from a machinist, another from a book, and so on. He is not any less an inventor for doing the first two things than he is for doing the last. 

The chemical art creates great problems in determining a correct chemical inventor entity. One built-in problem is the frequent later determination of a utility for a chemical compound or composition. An invention is not complete until its usefulness is determined, and this utility may be established either by an extended technical arm of the chemist who made the compound or by someone who is not such an arm. 

Other problems arise with new chemical compounds and compositions on one hand, and methods to make these compounds and compositions on the other hand. Every chemist knows that the first devised process has a lot of bugs, and it is necessary to determine proper reaction conditions such as concentration, temperature, and the like. Whether or not determination of such conditions is the work of an extended technical arm presents other problems. The determination of the chemical inventor entity is often a difficult problem, and it remains difficult even when all the facts of a particular situation are presented to a solicitor. Most often, the chemist inventor, the chemist joint inventors, and the chemist s technical arm will themselves appreciate what is the correct inventive picture. Chemists have an interest in this problem and should not hesitate to plead their case to the patent solicitor. Solicitors should not be overly officious in pronouncing an inventor entity but should be liberal and have an eye turned towards the morale, working relationships, and working conditions of the chemist. Liberality of course should never become laxity, which would endanger any issued patent. 

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