Inventorship

Whilst anybody can apply for a patent it will only be granted, certainly in the UK, to three classes of people. 

It is therefore necessary to be quite clear who are the inventors of the subject matter of a patent. 

During the course of a research project several people will be involved in, or will make some contribution to its success. For instance, these contributions can be in the design of the materials or experiments, the carrying out of the experimental work, the testing of the materials or processes, detailed analytical work, expert consultation or general project team or peer group discussions. 

This team approach to R D work can present problems when it comes to deciding who are the inventors to be included on a patent application. It is absolutely essential that the real inventors, and only those, are named on the patent. It is unacceptable to put a person s name on a patent for spurious reasons such as she did some good experimental work, it is a just reward or his analytical skills helped to prove the structure or even worse to keep the boss happy  

The definition of a true inventor is one who contributes to a novel feature of the invention as described in the claims [C-26]. The decision on who are the true inventors is best left until after an independent view from the patent agent has been 

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By the turn of the century the U.S. PTO may be operating under a system that includes (/) pubHcation of patent appHcations (2) opposition of allowed appHcations for purposes of testing vaHdity (J) the dawn of first-to-file priority examination and (4) the end of the antiquated test of inventorship called "interference practice." Legislation implementing many of these changes is pending before the U.S. Congress. 

Once the patent appHcation is complete and the inventor has made a formal declaration of inventorship, the appHcation is filed with the U.S. PTO. In the U.S. PTO, the appHcation is the subject of a thorough, formal, and substantive examination by a patent examiner. Once the patent examiner is convinced that the patent appHcation satisfies the statutory requirements provided for under the laws of the United States, the patent appHcation will be allowed to issue as a patent. Issuance takes the form of a pubHcation provided by the U.S. Government. The pubHcation of patents occurs only on Tuesdays that ate not federal hoHdays. At the time of issuance, the patent is assigned a number and made pubHc in a form which allows all interested patties to obtain access to it. 

Unlike the common practice occurring in other countries, in which award of patent rights is based on the date on which a patent apphcation is filed, in the United States the patent grant is based on the first date of invention. To be an inventor in the United States, an individual must contribute to conception of the invention, and may contribute to reduction of the invention to practice. Although the creation of an advance, development, or apphcation may be conceived by one given individual, it often is the case that the act of invention is the work of many individuals, especially in a commercial context. Accordingly, inventorship questions often arise. 

Inventorship. Those who may deserve to be considered inventors include ah. those who have contributed to conception of the invention. Further, those who have provided contributions which would be considered something above and beyond textbook knowledge in the reduction of the invention to practice may also deserve to be hsted as inventors. 

The importance of an accurate and complete record of invention caimot be underestimated. The record of invention should serve as the basic document for estabUshing the date of conception and reduction to practice of the invention. The U.S. PTO issues patents to those who are first to invent. In a contest over inventorship, any available record of invention is submitted to the U.S. PTO to estabUsh proof of an inventor s rights. As of January 1, 1996, any inventor from a country belonging to the World Trade Organization may use such evidence before the U.S. PTO. Previously, this type of proof could be rehed upon only if the activity, documented in the notebook, record, etc, was undertaken in the United States. Similarly, activity undertaken after December 8, 1993 in Mexico or Canada may also be rehed upon to prove inventorship. 

A reissue may be ordered to correct any minor or major mistake which occurred during prosecution of a patent, but the mistake must be one that makes the patent partially or whoUy inoperable. Inoperable essentially means that the patent caimot be enforced. For instance, a reissue proceeding can be used to correct inventorship or even broaden claims if the patent is less than two years old. However, such a request to broaden claims in the context of reissue may not be undertaken to recover subject matter canceled during examination. Further, a reissue proceeding may be undertaken to correct formal problems or address newly discovered prior art which affects the scope of the claims. The nature of a reissue proceeding directs that this mechanism should be used only when the vaUdity of the patent is in question owing to the error or problem in question. 

An interference is a contested action in the U.S. PTO to determine inventorship between two or more patent appHcants or between at least one patentee and one or more patent appHcants. The principal contest in an interference concerns the right to claim the invention. The interference action results from U.S. law, which awards patents to the first inventor, generally irrespective of patent appHcation filing date. In the simplest situation, an interference occurs when a pending appHcation discloses and claims the same invention which is claimed in at least one other copending appHcation or issued patent. 

The authors disclose inventorship of patents or patent applications bearing on the topic of formalin fixation (of peptides), now transferred to ThermoFisher Corp. 

So far in this brief historical overview we have studiously avoided the subject of inventorship of slurry expls. This is still a matter of. intense and acrimonious controversy. Slurry patent rights have been the subject of several protracted litigations. Consequently the writer will approach this subject with caution and trepidation... 

A patent is initially assigned to the inventor. If the invention lists more than one inventor, then each inventor is assigned an equal share in the entire invention. More will be said about this in Chapter 4, which deals with inventorship and inventorship issues. 

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. 

Such a situation might also present an inventorship issue the claimed invention must list all of the inventors and if one of the authors of the paper was also an inventor, then that person needs to be listed on the patent application as well. Note that the criteria for authorship are usually different from the criteria for inventorship much more detail will be provided on this topic in Chapter 4. 

Inventorship determines initial ownership of the claimed invention and thus properly determining and listing inventorship is in some cases every bit as important as properly listing the names of the owners on a deed to a very valuable property. The ownership... 

While we have seen that many of the ownership issues that arise from inventorship may be obviated by carefully assigning the rights to the invention in advance, this does not completely eliminate the need for proper determination of inventorship. For example, contracts assigning invention may still allow for the inventors to receive a certain percent of royalties should the invention become profitable (e.g., university inventors). However, as we will see in the next section, proper determination of inventorship goes beyond the issue of ownership proper inventorship goes right to the heart of the validity of the patent itself. 

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. 

Inventorship correction before the issuance of the patent is preferred and is governed by 35 U.S.C. 116 of the U.S. patent law which provides in part ... 

In practice, inventorship correction in a patent application depends on the circumstances for the correction, but in most cases requires a statement from each person being added and/or deleted that the error occurred without deceptive intent.12 In cases where an inventor or group of inventors refuse to sign such a statement or are otherwise not able to sign, it is possible for the assignee (assuming the invention has been assigned to another party such as an employer) to file a petition to the... 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

USPTO requesting a suspension of the rules.13 As an alternative to the correction of inventorship provisions provided for under 35 U.S.C. 116, applicants may also file a continuation application wherein they simply execute a new oath/declaration of inventorship listing the correct inventors.14... 

From the decision in Frank s, its clear that even when inventorship might be correctable under 256, the issue of inequitable conduct may be dispositive where the court finds deceptive intent. 

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