The Law Firm of
Louis Ventre, Jr.
Registered Patent Attorney
WHO IS AN INVENTOR
THE INVENTOR MAY APPLY FOR A PATENTINVENTORS AS APPLICANTS. United States law requires that a patent application be applied for in the name of the actual inventor or inventors. This is so even if the invention is owned by the inventor's employer or some other person. Under penalty of perjury, each patent applicant's declaration states that the applicant believes that he or she is the inventor.
OWNERS WHEN INVENTORS UNCOOPERATIVE. If the invention is owned by someone other than the inventor and the inventor cannot be found or refuses to cooperate in filing the application, the owner, upon a petition and certain proofs, may file the application as agent for the inventor. Similarly, if any of several inventors refuses to cooperate, one of the inventors may file without the uncooperative inventor upon a petition and certain proofs.
WHO IS AN INVENTOR? The inventor is the person or persons who conceived the invention. "The threshold question in determining inventorship is who conceived the invention." Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)].
IDEA ABOUT A DESIRED RESULT IS NOT CONCEPTION. If one has a idea about a desired result to be accomplished, but has not developed the actual details of the means for accomplishing the idea, the idea person is not the inventor: "one who suggests an idea of a result to be accomplished, rather than the means of accomplishing it, is not a coinventor". Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).
WHAT IS CONCEPTION? Conception arises when a "definite and permanent idea of an operative invention including every feature of the subject matter sought to be patented is known." Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985). So, if a person contributes to the inventive concept in a claim in the application, that person is an inventor.
UNDUE EXPERIMENTATION. Conception is complete when one of ordinary skill in the art could construct the apparatus, perform the process, or make the composition without unduly extensive research or experimentation. Trovan Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002). Conception can occur before reduction to practice, but if the invention doesn't work, there is no invention because conception is uncertain. That said, a person does not have to be certain that an invention will work in order for conception to have occurred. Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994).
SOME EXPERIMENTATION OK. Conception can be complete, and thus an invention made, even though experimentation continues. This occurs when the concept has been proved but the invention must be modified, streamlined or perfected to make it commercially viable. To determine if conception is complete, one must examine the connection between the research and the concept to determine whether the research was undertaken to complete conception. Bac v. Loomis, 252 F.2d 571, 577 (CCPA 1958).
IDEAS FROM OTHERS. A person is not entitled to claim inventor status just because he contributes ideas to the invention: "In arriving at . . . conception [the inventor] may consider and adopt ideas and materials derived from many sources . . . [such as] a suggestion from an employee, or hired consultant . . . so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes . . . even if such suggestion [or material] proves to be the key that unlocks his problem." Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965). Explaining how or why an invention works is not necessary for conception of an invention. Correspondingly, a person who explains how or why the invention works does not make one an inventor.
OBVIOUS IDEAS FROM OTHERS. A person who contributes only obvious elements is not an inventor. Sewall, 21 F.3d at 415-16; Eli Lilly v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004). A person who aids in reducing a conceived invention to practice is not an inventor.
NON-OBVIOUS IDEAS FROM OTHERS. "A joint invention is the product of collaboration of the inventive endeavors of two or more persons working towards the same end producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final effort." Monsanto Co. v. Kamp, 269 F. Supp, 818, 824 (D.D.C. 1967), endorsed in Kimberly-Clark Corp. v. The Proctor and Gamble Company, 973 F.2d 911, 916-17 (Fed. Cir. 1992). This is not a question of degree because even the smallest contribution to inventive concept is adequate to entitle one to claim inventor status.
REDUCTION TO PRACTICE. When one thinks of reduction to practice, most people envision actually building a model or a prototype of the invention. This, indeed, is actual reduction to practice. However, constructive reduction to practice occurs by the act of filing a patent application describing and claiming the invention sufficiently to teach a person of ordinary skill in the art how to practice the invention.
Conception is not complete if a subsequent course of experimentation, especially experimental failures, reveals uncertainty that so undermines the specificity of the inventor’s idea, that it is not yet a definite and permanent reflection of the complete invention as it will be used in practice. Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1207 (Fed. Cir. 1991).
If there is an actual reduction to practice, the inventor does not have to be involved: "there is no requirement that the inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his behalf." In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982). As a corollary to this, a person who reduces an invention to practice is not entitled to claim inventor status by virtue of his reduction to practice of the invention.
DATE OF CONCEPTION. When competing applications for the same invention are filed with the patent office, the first to invent is entitled to proceed with the application process. In this case, the date of conception is crucial. So, the person with proof of earlier conception is who will be able to proceed with the application process. See the page on this site concerning a laboratory notebook.
IMPORTANCE TO INFRINGEMENT ACTIONS. An invention presumptively belongs to all the inventors, who may transfer of assign any or all of their ownership rights. In order to sue for infringement, all the other co-owners must sue in order to establish "standing," that is, the right to sue. This rule is important because if one cannot get all the co-owners to agree to sue, then the infringer gets away with infringement. In other words, with certain exceptions, one co-owner has the right to limit the ability to sue infringers by refusing to join voluntarily in a patent infringement suit. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998).
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© 2006 Louis Ventre, Jr.
This file last modified 07/09/11.