THE INVENTOR MAY APPLY FOR A PATENT
INVENTORS 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.
DATE OF INVENTION.
The "date of invention" means either (1) the date of your invention's actual reduction to practice (you actually made and operated it); or (2) the date just prior to another's similar invention subsequent to your conception of the invention when your conception is followed by reduction to practice using continuous reasonable diligence. The reduction to practice may be a "constructive reduction to practice," which is signified by filing a patent application on the invention.
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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