A Practical Approach to Inventorship H. Sanders Gwin, Jr. Shumaker & Sieffert, P.A. 651-286-8361 (Tel.) 651-735-1102 (Fax) [email protected]

A Practical A Practical Approach to Approach to InventorshipInventorship

H. Sanders Gwin, Jr.H. Sanders Gwin, Jr.

Shumaker & Sieffert, P.A.Shumaker & Sieffert, P.A.

651-286-8361 (Tel.)651-286-8361 (Tel.)

651-735-1102 (Fax)651-735-1102 (Fax)

[email protected]@ssiplaw.com

OutlineOutline

Part I:Part I: The Law of InventorshipThe Law of Inventorship

Part II:Part II: Conducting an Inventorship Conducting an Inventorship DeterminationDetermination

Part III:Part III: Case Studies - Who Are The Case Studies - Who Are The Inventors?Inventors?

Part I:Part I:

The Law of InventorshipThe Law of Inventorship

Conception = InventionConception = Invention

CONCEPTION IS THE CONCEPTION IS THE TOUCHSTONE OF INVENTIONTOUCHSTONE OF INVENTION

ConceptionConception

““Formation in the mind of the Formation in the mind of the inventor of a definite and permanent inventor of a definite and permanent idea of the complete and operative idea of the complete and operative invention, as it is to be applied in invention, as it is to be applied in practice”practice”

““The Invention” Means Subject The Invention” Means Subject Matter Set Forth in Properly Matter Set Forth in Properly Construed ClaimsConstrued Claims

ConceptionConception

TESTS FOR CONCEPTION:TESTS FOR CONCEPTION: Did Inventor Identify Problem to be Did Inventor Identify Problem to be

Solved, or Determine Solution to Solved, or Determine Solution to Known Problem?Known Problem?

Did Inventor have an Idea/Solution Did Inventor have an Idea/Solution that was Definite and Permanent that was Definite and Permanent Enough that One Skilled in the Art Enough that One Skilled in the Art Could Understand it Without Could Understand it Without Extensive Additional Extensive Additional Research/Experimentation?Research/Experimentation?

ConceptionConceptionPROVING CONCEPTIONPROVING CONCEPTION

Corroborating Evidence RequiredCorroborating Evidence Required

Rule of Reason – Evidence Considered in Context, Rule of Reason – Evidence Considered in Context, Fact-Finder Must Make Credibility DeterminationFact-Finder Must Make Credibility Determination

Contemporaneous Disclosure PreferredContemporaneous Disclosure Preferred

Need Only Show Complete Mental Picture and Need Only Show Complete Mental Picture and Describe Invention with Particularity – Scientific Describe Invention with Particularity – Scientific Certainty Not RequiredCertainty Not Required

Must be Sufficiently Developed to Fully Describe Must be Sufficiently Developed to Fully Describe invention to One of Ordinary Skill in the Artinvention to One of Ordinary Skill in the Art

Completed Thought Expressed in Clear Terms to Completed Thought Expressed in Clear Terms to Enable Skilled Artisans to make/use invention Enable Skilled Artisans to make/use invention without undue further experimentation or researchwithout undue further experimentation or research

ConceptionConception Mechanical/Electrical inventions Mechanical/Electrical inventions

Drawing/circuit diagramDrawing/circuit diagram

SoftwareSoftwareFlow ChartsFlow Charts

ChemicalChemicalStructure, Name, Formula, Chemical/Physical Structure, Name, Formula, Chemical/Physical

property, Utility, Method of Making (unless routine)property, Utility, Method of Making (unless routine)

BiotechBiotechSequence (or other structure), Utility, Method of Sequence (or other structure), Utility, Method of Obtaining or MakingObtaining or Making

Reduction to PracticeReduction to Practice

Must Show Invention in Physical/Tangible Must Show Invention in Physical/Tangible formform

ActualActualBuild Prototype Build Prototype Conduct Successful ExperimentsConduct Successful ExperimentsProve Invention Works to a Scientific Prove Invention Works to a Scientific

CertaintyCertainty

ConstructiveConstructiveFile patent applicationFile patent applicationDisclosure Meets Requirements of Section Disclosure Meets Requirements of Section

112112

Reduction to PracticeReduction to Practice NOT as important as conception, unless art NOT as important as conception, unless art

highly unpredictable (chemical/biotech), highly unpredictable (chemical/biotech), may in such cases be simultaneousmay in such cases be simultaneous

Can be carried out by the inventors or Can be carried out by the inventors or others working under their direction and others working under their direction and controlcontrol

Were problems encountered during the Were problems encountered during the actual reduction to practice?actual reduction to practice? Did investigators offer suggestions/ideas leading to Did investigators offer suggestions/ideas leading to

an operative invention?an operative invention?

Factors Tending Away Factors Tending Away From InventorshipFrom Inventorship

Contribute Obvious Element or Making Contribute Obvious Element or Making Superficial Changes to Another’s DesignSuperficial Changes to Another’s Design

Suggest Desired Result – No Means to Accomplish Suggest Desired Result – No Means to Accomplish itit

Following Instructions of ConceiversFollowing Instructions of Conceivers

Explaining How/Why Invention worksExplaining How/Why Invention works

Explaining State of the Art or Providing Well Explaining State of the Art or Providing Well Known Principles or Known Component/Starting Known Principles or Known Component/Starting materialmaterial

Sole Inventorship and Sole Inventorship and Joint InventorshipJoint Inventorship

SoleSole One person responsible for conceptionOne person responsible for conception

Joint Joint Two or More People Collaborate and Two or More People Collaborate and

Contribute to the Joint Arrival of a Contribute to the Joint Arrival of a Definite and Permanent Idea of the Definite and Permanent Idea of the InventionInvention

Collaboration EssentialCollaboration Essential Direct or Indirect (via intermediary)Direct or Indirect (via intermediary)


Joint inventors do not have to:Joint inventors do not have to: work together or at the same timework together or at the same time make the same type or amount of contributionmake the same type or amount of contribution contribute to every claimcontribute to every claim

However:However: Each Inventor Must Contribute to the Joint Each Inventor Must Contribute to the Joint

Arrival at the Definite and Permanent Idea of the Arrival at the Definite and Permanent Idea of the Invention as it Will be Used in PracticeInvention as it Will be Used in Practice

Contribution Must be Significant When Contribution Must be Significant When Measured Against the Dimension of the Full Measured Against the Dimension of the Full InventionInvention

Basic Exercise of Ordinary Skill InsufficientBasic Exercise of Ordinary Skill Insufficient Contribution Must be Non-ObviousContribution Must be Non-Obvious


Joint Inventors are Joint Owners - Co-Joint Inventors are Joint Owners - Co-inventor of one claim has a pro rata inventor of one claim has a pro rata undivided ownership interest in undivided ownership interest in allall claims claims Co-inventor of only one claim might gain Co-inventor of only one claim might gain

entitlement to ownership of a patent with dozens of entitlement to ownership of a patent with dozens of claimsclaims

Standing to sue - each joint owner must Standing to sue - each joint owner must join all the other co-owners join all the other co-owners One co-owner has the right to limit the other co-One co-owner has the right to limit the other co-

owner’s ability to sue infringers by refusing to join owner’s ability to sue infringers by refusing to join voluntarily in patent infringement suitvoluntarily in patent infringement suit


Assessment of Prior ArtAssessment of Prior Art Earlier work of A may be prior art to Earlier work of A may be prior art to

later work of A and Blater work of A and B

Ability to Claim PriorityAbility to Claim Priority Continuation or foreign applicationContinuation or foreign application

Part II:Part II:

Conducting an Inventorship Conducting an Inventorship DeterminationDetermination

Inventorship DeterminationInventorship Determination Only true and original inventors may applyOnly true and original inventors may apply

Original inventor uses ideas from own Original inventor uses ideas from own thinking rather than someone else’sthinking rather than someone else’s

Attorney/Agent’s primary role in Attorney/Agent’s primary role in inventorship determination:inventorship determination:

Determine whether each inventor Determine whether each inventor reasonably “believes himself to be the reasonably “believes himself to be the original and first inventor”original and first inventor”

Suggested Inventorship Suggested Inventorship Determination ProcessDetermination Process

On-going Client EducationOn-going Client Educationa)a) Importance of having correct Importance of having correct

inventorshipinventorshipb)b) Legal determination made by Legal determination made by

qualified practitionerqualified practitionerc)c)Not the same as authorshipNot the same as authorshipd)d) Does not reflect quality, value or Does not reflect quality, value or

amount of contributionamount of contributione)e) Is based on the claimsIs based on the claimsf)f) Inventorship basicsInventorship basicsg)g) The process that is usedThe process that is used


Make determination after the entire Make determination after the entire application and claims have been preparedapplication and claims have been prepared

Compare contributions of possible inventors Compare contributions of possible inventors to claims – to claims – INVENTORSHIP IS BASED ON THE CLAIMSINVENTORSHIP IS BASED ON THE CLAIMS

Interview possible inventorsInterview possible inventorsa)a) As a group?As a group?b)b) Separately?Separately?c)c) Both?Both?d)d) Look for consistency and credibility in explanationsLook for consistency and credibility in explanationse)e) Be wary of “suspect” inventorsBe wary of “suspect” inventors


Review documentary evidence as neededReview documentary evidence as needed Notebooks, invention records, reports, Notebooks, invention records, reports,

diaries, etc.diaries, etc.

Look for corroborating evidence to Look for corroborating evidence to resolve conflicts, as neededresolve conflicts, as needed

Make final inventorship determinationMake final inventorship determination Can it be easily explained and defended?Can it be easily explained and defended? If alternative determinations are possible, If alternative determinations are possible,

has the most has the most justifiable one been selected?justifiable one been selected?

Record results in a file memoRecord results in a file memo

Advise client of possible staff conflictsAdvise client of possible staff conflicts

Questions for Determining Questions for Determining InventorshipInventorship

Why did you develop this invention?Why did you develop this invention?

How did you learn of the problem How did you learn of the problem that you have solved?that you have solved?

What background information did What background information did you have at the start and where did you have at the start and where did it come from?it come from?

When and where was the invention When and where was the invention developed?developed?


Describe how the invention was Describe how the invention was developed and tested - who was developed and tested - who was involved? What did you do?involved? What did you do?

Did you work with anyone else or Did you work with anyone else or receive suggestions, ideas or receive suggestions, ideas or recommendations from anyone else? recommendations from anyone else? Who? What did that person do? When Who? What did that person do? When did that person become involved?did that person become involved?


Do you have any records describing the Do you have any records describing the work that was done?work that was done? If no, then why not?If no, then why not?

Has the invention been reduced to Has the invention been reduced to practice?practice? Who did this? When? Where? How?Who did this? When? Where? How?

Were any problems encountered while Were any problems encountered while reducing the invention to practice?reducing the invention to practice? If so, describe the problems, how they were If so, describe the problems, how they were

solved, and who solved them.solved, and who solved them.


Do you believe that you should be Do you believe that you should be named as an inventor?named as an inventor? Why or why not?Why or why not?

Do you believe [name of possible co-Do you believe [name of possible co-inventor] should be named as an inventor] should be named as an inventor?inventor? Why or why not?Why or why not?


Try to Eliminate “Legal” TermsTry to Eliminate “Legal” Terms Inventorship DiscussionsInventorship Discussions Invention Disclosure FormInvention Disclosure Form

““Inventor(s)” (“Investigators” is a better term)Inventor(s)” (“Investigators” is a better term)

““Conception” (Ask instead: “Describe when the Conception” (Ask instead: “Describe when the invention was first thought of or written down”)invention was first thought of or written down”)

““Reduction to practice” (Ask about experiments or Reduction to practice” (Ask about experiments or tests instead)tests instead)

Prior art (“Background information” is a better term)Prior art (“Background information” is a better term)

Best mode” (Ask if the investigators have a preferred Best mode” (Ask if the investigators have a preferred design or process)design or process)

Part III:Part III:

Case Studies:Case Studies:

Who Are The Inventors?Who Are The Inventors?

Who Are The Inventors?Who Are The Inventors?Case Study No. 1Case Study No. 1

Five people were in a meetingFive people were in a meeting

An invention was conceivedAn invention was conceived

No one remembers who said No one remembers who said what/whenwhat/when

There is no written evidenceThere is no written evidence

Comments on Case Study No. 1Comments on Case Study No. 1

Are all five people subject to an Are all five people subject to an obligation of common assignment?obligation of common assignment?

Is there agreement or disagreement Is there agreement or disagreement among the five people as to what among the five people as to what happened?happened?

Are any of the five people “suspect?”Are any of the five people “suspect?”

Foster additional collaboration?Foster additional collaboration?


A and B were considered during the A and B were considered during the inventorship determinationinventorship determination

You determine that B is the sole You determine that B is the sole inventorinventor

B still believes that A is/is not an B still believes that A is/is not an inventorinventor

Comments on Case Study No. 2Comments on Case Study No. 2 Can B sign an oath or declaration in good Can B sign an oath or declaration in good

faith?faith?

What is B’s motivation for wanting to What is B’s motivation for wanting to include/exclude A?include/exclude A?

What is A’s motivation to be on the patent?What is A’s motivation to be on the patent?

Be prepared to explain process and Be prepared to explain process and decisiondecision

If you decide A is not an inventorIf you decide A is not an inventor Advise client to recognize A’s efforts tooAdvise client to recognize A’s efforts too Advise client that internal conflict may resultAdvise client that internal conflict may result


C conceived an invention and reduced C conceived an invention and reduced it to practiceit to practice

6 months later D independently 6 months later D independently conceived and reduced to practice conceived and reduced to practice substantially the same inventionsubstantially the same invention


Did D add anything to C’s work?Did D add anything to C’s work?

Can this new subject matter be claimed Can this new subject matter be claimed in this or a separate patent in this or a separate patent application?application?

What happened in the intervening six What happened in the intervening six months?months?

Foster collaboration?Foster collaboration? What if the time difference was 1 year?What if the time difference was 1 year?

2 years?2 years? 10 years?10 years?


G and H are named as inventors in a G and H are named as inventors in a FILED patent applicationFILED patent application

After filing, J says he’s an inventor too After filing, J says he’s an inventor too because he provided H with a new part because he provided H with a new part that he designedthat he designed part is claimed in a number of dependent claims part is claimed in a number of dependent claims

in the applicationin the application J’s notebook does not show this, H denies J’s notebook does not show this, H denies

it, and G claims no knowledge of itit, and G claims no knowledge of it

You believe that J is a inventor and, fear G, You believe that J is a inventor and, fear G, H are not being forthcomingH are not being forthcoming


Should the bar be raised once the Should the bar be raised once the patent application has been filed?patent application has been filed?

Generally, NoGenerally, No

What is the basis for J’s claim? Is it What is the basis for J’s claim? Is it credible?credible?

Which outcome is most easily defended?Which outcome is most easily defended?

Alert client to a possible internal Alert client to a possible internal conflictconflict


K, L and M are inventors on a patent K, L and M are inventors on a patent application; Q was considered but not application; Q was considered but not namednamed

After filing, Q complainsAfter filing, Q complains

Meeting with senior legal and R&D Meeting with senior legal and R&D staff confirms the initial inventorship staff confirms the initial inventorship but also shows:but also shows: There were credible arguments for naming Q There were credible arguments for naming Q Claims to Q’s contribution could have been Claims to Q’s contribution could have been

drafteddrafted

Comments on Case Study No. 5Comments on Case Study No. 5 Could you draft claims to include Q in Could you draft claims to include Q in

this or a related application?this or a related application?

When drafting claims, Anticipate the When drafting claims, Anticipate the organizational consequences of your organizational consequences of your decisionsdecisions

Don’t ignore opportunities to be Don’t ignore opportunities to be inclusive when doing so will not inclusive when doing so will not compromise your client’s rightscompromise your client’s rights


Professor suggested to Student Professor suggested to Student Compound X, Professor drew Compound X, Professor drew structure structure

Student synthesized Compound X Student synthesized Compound X according to Professor’s synthetic according to Professor’s synthetic strategystrategy


Chemical compound conception Chemical compound conception requires structure, name, formula, requires structure, name, formula, chemical or physical property, utility chemical or physical property, utility and method of making (if not routine)and method of making (if not routine)

Evidence that Professor Conceived All Evidence that Professor Conceived All of the Above?of the Above?

Evidence Any Conceived by Student?Evidence Any Conceived by Student?

Documents

A Practical Approach to Inventorship H. Sanders Gwin, Jr. Shumaker & Sieffert, P.A. 651-286-8361 (Tel.) 651-735-1102 (Fax) [email protected]