Inventor entity

Another difficulty with joint inventors arises when it becomes necessary to file a continuation case. This may be embarrassing because of the requirement to keep the same inventor entities in order to get the benefit of their earlier filing date. Of course the disadvantages and objections... 

Apparently you cannot become too casual about changing the inventor entity. A respected text writer (13) says that the Patent Office would not permit a new sole inventor to be named if he never appeared on the application as an inventor. He could be named as a joint inventor but not as a single inventor. 

Since the inventor entity can be changed, any chemist learning of a filed application, say in his company, should bring any pertinent facts he may know to the attention of the patent solicitor at any time. 

The selection of a proper inventor entity is still a serious consideration despite the liberality in changing inventors permitted by the statute. The validity of a patent is most in danger with a single inventor named as a wrong inventor or if any inventor entity, sole or joint, is deliberately misnamed for any reason. The courts in general take a more serious view of an omitted joint inventor rather than one added who is not in fact a joint inventor. There is heavy presumption that the inventors named in the patent are the correct ones. Many courts do not like to see a patent attacked because of improper inventorship and such courts regard this merely as a technical defense. In general, if there is any doubt, it is recommended that the patent solicitor select a joint inventor entity rather than a sole inventor entity. 

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. 

Only the actual inventor may apply for a patent (utility, design, or plant patent). Once a patent has been obtained, the patent can be sold or mortgaged. Also, the owner of a patent may assign part or all interest in the patent to another individual or a company or other business entity. The owner of a patent may also grant licenses to others (either individuals or business entities) to make, use or sell the invention. 

From the ethical standpoint, a patentable invention or a trade secret is like a piece of real estate it can be sold once, but then the original owner has no right to sell it again. On the other hand, we might compare an inventor with spectacular skill with the owner of an apartment house who can rent out an apartment and collect rent each month. Similarly, the scientist with unique skills can rent out those skills as an employee of a single entity or as a consultant to several, but he should be sure that he is renting skills and not purloining trade secrets. 

The general adoption of a first to file system including a grace period for filing patent applications following disclosure by an inventor, with small entity fee reductions would assist smaller companies and may prevent them from losing patent rights to their irmovative products and processes. 

As a preliminary matter, the nonprovisional patent application, whether filed in the United States directly or when it enters the U.S. national stage via the PCT, requires that all applicants must be inventors and all of the inventors names and addresses must be provided with the patent application. This is in contrast to many other patent jurisdictions, where the applicant can be a business entity, such as the company an inventor may have assigned his invention to. Additionally, all nonprovisional patent applications require an oath or declaration of inventorship to be included with the patent application or submitted within the prescribed time thereafter. The requirements of the oath or declaration of inventorship are explained in 37 CFR 1.63-1.69. Initial entry of patent applications to the United States from the PCT are governed by the Code as outlined in 35 U.S.C. 371 National stage Commencement. 

If the earlier patent application was to the same inventive entity then 102(a) and 102(e) would not apply since those sections apply to the work of another. However, exclusions under 103(c)/102(e) draw their usefulness from the fact that very often in an organization or within a group working together under a research collaboration, different or at least overlapping groups of inventors may work on related aspects of a project such that multiple patent applications may be filed over a period of time where each patent application lists a different inventive entity. In addition, the publication date of the first application is also important since it cannot be antedated in the patent world outside the United States. 

As we saw in the previous section, properly determining inventorship is important because inventorship determines initial ownership and all of the attendant financial considerations that go with it. Listing proper inventorship is also critically important because improper inventorship means that the inventors listed are not the actual inventors of the subject matter. If you are thinking to yourself, so what then you need to recall that 102(f) of the U.S. patent code provides that A person shall be entitled to a patent unless. ..he did not himself invent the subject matter sought to be patented (emphasis added). In 102(f), the word he refers to the inventive entity (all of the inventors) named on the patent.10 Thus if an inventor has been left off the patent (referred to as nonjoinder of a proper inventor), then the listed inventors did not invent the subject matter of the claimed invention entirely themselves since they did not invent all of the subject matter of the claimed invention.11 Such a patent is invalid. Likewise, if a patent is granted that lists one or more persons who were not actually inventors, then he would not have invented all of the subject matter sought to be patented since some of the listed inventors would not actually be inventors (this is referred to as misjoinder ). Such a patent is also invalid. If this seems a harsh remedy for what can be a difficult determination to make (as we soon will see), then you will be relieved to know that mistakes in inventorship can be corrected both before and after issuance of the patent. 

Whether an invention is by a sole inventor or by a joint inventor, it is a mental product. It is either a sole or a joint mental product. Joint inventors are one legal animal, and a sole inventor is another legal animal. If chemist A is the applicant on one invention and chemists A and B are the applicants on another related invention, they are separate legal entities. To demonstrate dramatically how different, it has been held (7) that a joint invention of both A and B is a good anticipation to a later related invention of either A or B, and the fact that either A or B was a joint inventor of the reference does not discredit the reference in the slightest. 

Naturally, the industry as a prime inventor has the opportunity to carry out seminal work with entirely unique concepts, even if many of them do not become therapies for humans. Human is a unique animal which can, and does, exhibit unique responses to a new chemical entity. No pre-clinical work can be entirely predictive of a successful response in the clinic, and there can, in the end, be no substitute for human testing. Some products fail because of safety problems specific to humans, and some because the early promise of efficacy in model systems is not realized in humans. 

Unlike commercial entities, university licensors do not always retain 100% of the royalty received from licensing an invention. Royalty payments received by university licensors from commercial firms may have to be divided with the inventor pursuant to the requirements of Federal law or the university s internal patent policy. 

When neither a patent assignment danse in an employment contract or in a policy statement in an internal company document exists, employer ownership of patent rights can be implied for employees who are hired to invent, i.e., those hired either for a specific project or problem or for their expertise in a specific area. If the inventor is an officer or director of a corporation or other business entity, a special obligation to assign may exist as part of the officer s or director s fiduciary duty toward the entity. 

Autonomy of object The inventor feels that the object is an entire independent entity and says I have the feeling that this thing is on its own, completely outside of me.. .. ... 

The last psychological state identified by Gordon and his team is the state of autonomy of object. In this case, the inventor suddenly feels that the object is an entirely independent entity with its own life—that it is simply an adaptive system. The inventor begins watching the object moving, responding to the input from its environment, and it is like a movie slowly developing in front of his eyes, like virtual reality in action. 

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