2. Outline Part I: The Law of Inventorship
Part II: Conducting an Inventorship Determination
Part III: Case Studies - Who Are The Inventors?

3. The Law of Inventorship
Part I:
The Law of Inventorship

4. Conception = Invention CONCEPTION IS THE TOUCHSTONE OF INVENTION

5. Conception
“Formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice”
“The Invention” Means Subject Matter Set Forth in Properly Construed Claims

6. Conception TESTS FOR CONCEPTION:
Did Inventor Identify Problem to be Solved, or Determine Solution to Known Problem?
Did Inventor have an Idea/Solution that was Definite and Permanent Enough that One Skilled in the Art Could Understand it Without Extensive Additional Research/Experimentation?

7. Conception PROVING CONCEPTION Corroborating Evidence Required
Rule of Reason – Evidence Considered in Context, Fact-Finder Must Make Credibility Determination
Contemporaneous Disclosure Preferred
Need Only Show Complete Mental Picture and Describe Invention with Particularity – Scientific Certainty Not Required
Must be Sufficiently Developed to Fully Describe invention to One of Ordinary Skill in the Art
Completed Thought Expressed in Clear Terms to Enable Skilled Artisans to make/use invention without undue further experimentation or research

8. Conception Mechanical/Electrical inventions Software Chemical Biotech
Drawing/circuit diagram
Software
Flow Charts
Chemical
Structure, Name, Formula, Chemical/Physical property, Utility, Method of Making (unless routine)
Biotech
Sequence (or other structure), Utility, Method of Obtaining or Making

9. Reduction to Practice Must Show Invention in Physical/Tangible form
Actual
Build Prototype
Conduct Successful Experiments
Prove Invention Works to a Scientific Certainty
Constructive
File patent application
Disclosure Meets Requirements of Section 112

10. Reduction to Practice
NOT as important as conception, unless art highly unpredictable (chemical/biotech), may in such cases be simultaneous
Can be carried out by the inventors or others working under their direction and control
Were problems encountered during the actual reduction to practice?
Did investigators offer suggestions/ideas leading to an operative invention?

11. Factors Tending Away From Inventorship
Contribute Obvious Element or Making Superficial Changes to Another’s Design
Suggest Desired Result – No Means to Accomplish it
Following Instructions of Conceivers
Explaining How/Why Invention works
Explaining State of the Art or Providing Well Known Principles or Known Component/Starting material

12. Sole Inventorship and Joint Inventorship
One person responsible for conception
Joint
Two or More People Collaborate and Contribute to the Joint Arrival of a Definite and Permanent Idea of the Invention
Collaboration Essential
Direct or Indirect (via intermediary)

13. Sole Inventorship and Joint Inventorship
Joint inventors do not have to:
work together or at the same time
make the same type or amount of contribution
contribute to every claim
However:
Each Inventor Must Contribute to the Joint Arrival at the Definite and Permanent Idea of the Invention as it Will be Used in Practice
Contribution Must be Significant When Measured Against the Dimension of the Full Invention
Basic Exercise of Ordinary Skill Insufficient
Contribution Must be Non-Obvious

14. Sole Inventorship and Joint Inventorship
Joint Inventors are Joint Owners - Co-inventor of one claim has a pro rata undivided ownership interest in all claims
Co-inventor of only one claim might gain entitlement to ownership of a patent with dozens of claims
Standing to sue - each joint owner must join all the other co-owners
One co-owner has the right to limit the other co-owner’s ability to sue infringers by refusing to join voluntarily in patent infringement suit

15. Sole Inventorship and Joint Inventorship
Assessment of Prior Art
Earlier work of A may be prior art to later work of A and B
Ability to Claim Priority
Continuation or foreign application

16. Conducting an Inventorship Determination
Part II:
Conducting an Inventorship Determination

17. Inventorship Determination
Only true and original inventors may apply
Original inventor uses ideas from own thinking rather than someone else’s
Attorney/Agent’s primary role in inventorship determination:
Determine whether each inventor reasonably “believes himself to be the original and first inventor”

18. Suggested Inventorship Determination Process
On-going Client Education
a) Importance of having correct inventorship
b) Legal determination made by qualified practitioner
c) Not the same as authorship
d) Does not reflect quality, value or amount of contribution
e) Is based on the claims
f) Inventorship basics
g) The process that is used

19. Suggested Inventorship Determination Process
Make determination after the entire application and claims have been prepared
Compare contributions of possible inventors to claims –
INVENTORSHIP IS BASED ON THE CLAIMS
Interview possible inventors
a) As a group?
b) Separately?
c) Both?
d) Look for consistency and credibility in explanations
e) Be wary of “suspect” inventors

20. Suggested Inventorship Determination Process
Review documentary evidence as needed
Notebooks, invention records, reports, diaries, etc.
Look for corroborating evidence to resolve conflicts, as needed
Make final inventorship determination
Can it be easily explained and defended?
If alternative determinations are possible, has the most
justifiable one been selected?
Record results in a file memo
Advise client of possible staff conflicts

21. Questions for Determining Inventorship
Why did you develop this invention?
How did you learn of the problem that you have solved?
What background information did you have at the start and where did it come from?
When and where was the invention developed?

22. Questions for Determining Inventorship
Describe how the invention was developed and tested - who was involved? What did you do?
Did you work with anyone else or receive suggestions, ideas or recommendations from anyone else? Who? What did that person do? When did that person become involved?

23. Questions for Determining Inventorship
Do you have any records describing the work that was done?
If no, then why not?
Has the invention been reduced to practice?
Who did this? When? Where? How?
Were any problems encountered while reducing the invention to practice?
If so, describe the problems, how they were solved, and who solved them.

24. Questions for Determining Inventorship
Do you believe that you should be named as an inventor?
Why or why not?
Do you believe [name of possible co-inventor] should be named as an inventor?

25. Questions for Determining Inventorship
Try to Eliminate “Legal” Terms
Inventorship Discussions
Invention Disclosure Form
“Inventor(s)” (“Investigators” is a better term)
“Conception” (Ask instead: “Describe when the invention was first thought of or written down”)
“Reduction to practice” (Ask about experiments or tests instead)
Prior art (“Background information” is a better term)
Best mode” (Ask if the investigators have a preferred design or process)

26. Case Studies: Who Are The Inventors?
Part III:
Case Studies:
Who Are The Inventors?

27. Who Are The Inventors? Case Study No. 1
Five people were in a meeting
An invention was conceived
No one remembers who said what/when
There is no written evidence

28. Comments on Case Study No. 1
Are all five people subject to an obligation of common assignment?
Is there agreement or disagreement among the five people as to what happened?
Are any of the five people “suspect?”
Foster additional collaboration?

29. Who Are The Inventors? Case Study No. 2
A and B were considered during the inventorship determination
You determine that B is the sole inventor
B still believes that A is/is not an inventor

30. Comments on Case Study No. 2
Can B sign an oath or declaration in good faith?
What is B’s motivation for wanting to include/exclude A?
What is A’s motivation to be on the patent?
Be prepared to explain process and decision
If you decide A is not an inventor
Advise client to recognize A’s efforts too
Advise client that internal conflict may result

31. Who Are The Inventors? Case Study No. 3
C conceived an invention and reduced it to practice
6 months later D independently conceived and reduced to practice substantially the same invention

32. Comments on Case Study No. 3
Did D add anything to C’s work?
Can this new subject matter be claimed in this or a separate patent application?
What happened in the intervening six months?
Foster collaboration?
What if the time difference was 1 year?
2 years?
10 years?

33. Who Are The Inventors? Case Study No. 4
G and H are named as inventors in a FILED patent application
After filing, J says he’s an inventor too because he provided H with a new part that he designed
part is claimed in a number of dependent claims in the application
J’s notebook does not show this, H denies it, and G claims no knowledge of it
You believe that J is a inventor and, fear G, H are not being forthcoming

34. Comments on Case Study No. 4
Should the bar be raised once the patent application has been filed?
Generally, No
What is the basis for J’s claim? Is it credible?
Which outcome is most easily defended?
Alert client to a possible internal conflict

35. Who Are The Inventors? Case Study No. 5
K, L and M are inventors on a patent application; Q was considered but not named
After filing, Q complains
Meeting with senior legal and R&D staff confirms the initial inventorship but also shows:
There were credible arguments for naming Q
Claims to Q’s contribution could have been drafted

36. Comments on Case Study No. 5
Could you draft claims to include Q in this or a related application?
When drafting claims, Anticipate the organizational consequences of your decisions
Don’t ignore opportunities to be inclusive when doing so will not compromise your client’s rights

37. Who Are The Inventors? Case Study No. 6
Professor suggested to Student Compound X, Professor drew structure
Student synthesized Compound X according to Professor’s synthetic strategy

38. Comments on Case Study No. 6
Chemical compound conception requires structure, name, formula, chemical or physical property, utility and method of making (if not routine)
Evidence that Professor Conceived All of the Above?
Evidence Any Conceived by Student?