INTELLECTUAL PROPERTY

PROTECTION

OFFICE OF PATENT COUNSEL

March 16, 2001

INTELLECTUAL PROPERTY
PROTECTION

• INVENTORSHIP

• PATENT APPLICATION
FILING PRACTICES
INVENTORSHIP

Francis A. Cooch
Patent Counsel
 OUTLINE
•Who can file for a patent?
•Who is an inventor?
•Conception
•Proof of inventorship
•Joint inventorship
•Inventorship – who
determines and when
•Correction of inventorship
•PLUS ADDED BONUS:
LEGAL DEFINITIONS
WHO CAN FILE A PATENT APPLICATION?

Title 35 of the U.S. CODE states:

“An application for patent shall be made, or
authorized to be made, by the inventor ….”
35 USC 111(a)

“When an invention is made by two or more

persons jointly, they shall apply for patent
jointly ….” 35 USC 116
WHO CAN FILE A PATENT APPLICATION?

In short, under Federal law,

ONLY INVENTORS!*

*At APL, Lab entitled to assignment

of rights.
Requirement for Oath or Declaration

Title 35 of the U.S. CODE states:

“The applicant [for patent] shall make an oath

that he believes himself to be the original and
first inventor of the [invention], for which he
solicits a patent ….” 35 USC 115
INVENTORSHIP
IS
DIFFERENT
FROM
AUTHORSHIP
 WHO IS AN INVENTOR?

Anyone who contributes to the

CONCEPTION
of the invention
 What is CONCEPTION?

“Conception is the touchstone

of inventorship, the
completion of the mental part
of invention.” Fed. Cir.
 What is CONCEPTION? (cont.)

“Conception is a definite solution to a

problem that can be explained to and
understood by one skilled in the art
and that requires only the assistance
of one of ordinary skill in the art to
reduce to practice.” Fed. Cir.
 What is CONCEPTION? (cont.)

Conception exists if:

“… the inventor(s) had an idea – a specific
settled idea, a particular solution to the
problem at hand and not a general goal or
research plan – that was definite and
permanent enough that one skilled in the
art could understand the invention.”
What is CONCEPTION? (cont.)

Wright Brothers

• IDEA
• DETAILED SOLUTION
• JOINT
INVENTORSHIP
IS
DIFFERENT
FROM
AUTHORSHIP
 PROOF OF CONCEPTION

• Supported by corroborating evidence

• Contemporaneous written disclosure
• Lab Notebook!
 JOINT INVENTORSHIP

“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 ….” Dist.D.C.
 JOINT INVENTORSHIP (cont.)

“Inventors may apply for a patent jointly

even though (1) they did not physically
work together or at the same time, (2) each
did not make the same type or amount of
contribution, or (3) each did not make a
contribution to the subject matter of every
claim of the patent.” 35 USC 116
 JOINT INVENTORSHIP (cont.)

Joint conception may exist where:

• There were joint labors

• Contributions are made by each are different
• Contributions were made independently
• Invention conceived in stages in R&D effort
 JOINT INVENTORSHIP (cont.)

Joint conception will not exist where:

• One contributes an obvious element
• One merely suggests an idea
• One only follows instructions
• One explains how or why the invention works
• One participates in consultations prior to or
after conception
INVENTORSHIP
IS
DIFFERENT
FROM
AUTHORSHIP
WHO DETERMINES INVENTORSHIP?

Inventorship is a legal determination

to be made by the patent attorney
based on the facts in each case.
WHEN IS INVENTORSHIP DETERMINED?

When the patent application has been

drafted and is ready to be filed – the
claims define the invention(s) for
which inventors will be determined.
 CORRECTION OF INVENTORSHIP

• Good faith error – can be corrected

and does not render patent invalid

• Deceptive intent – patent can be held

invalid
 SUMMARY
• Only inventors can apply for a patent
• Inventorship defined by contribution
to conception, i.e., to the definite
solution to the problem
• Proof of conception necessary
• Joint inventorship – all must have
contributed to the conception
• Attorney determines inventorship before
application is filed
• Good faith errors in inventorship can
can be corrected
Patent Application
Filing Practices
 Introduction

The Black Hole

or
What really happens after you submit an
Invention Disclosure Form to the Office of
Patent Counsel (OPC)?
 OTT/OPC

• Before Discussing at Biweekly meeting

• review disclosure
• speak with inventor(s)
• perform prior art search/novelty
 OTT/OPC
Determination to File
PROVISIONAL

• Biweekly meeting to discuss

– File
– Hold
– Let go
 PROVISIONAL
APPLICATION
• Provisional applications entail
– submitting all relevant material to US Patent and
Trademark Office
• Including
– fee
– form
– can submit regular application including claim(s)
– gives 1 year in which to further development, funding,
licensing, etc.
 Before 1 year is up

– Make determination whether to file a regular

patent application
– OTT/OPC makes decision
– If determine not to file
• put on hold
• abandon
• file a second provisional application
 BASIS OF
DECISION
• Novelty
• Stage of Development
• Commercial Potential
• Commercial Interest
 File in PCT

• If want protection overseas

• If within 1 year of publication
– includes time that provisional application was
filed
 PCT

• ADVANTAGES
– Designating 88 countries including US
– A search and preliminary examination is
performed before filing in individual countries
– Allows time for additional R&D
– Allows time to find Licensee
 US

• If not filing PCT, then file US only

• If filed PCT, can enter US at any time up to
30 months after filing
 PUBLICATION

• Both PCT and US published for public to

see after 18 months
 PATENT TERM

• 20 years from date of filing (unless

before 1995)
– If PRV filed have 1 extra year (US)
• Takes an average of 3 years to obtain a
patent
 PATENT RIGHTS

• Allows you to exclude others from

making, using or selling
 SPECIFICATION

• Tells best way to make the invention

• Without undue experimentation
 CLAIMS

• Most important part of application

• Define the invention
• Are what are looked to for infringement
 OPC FACTS
• Invention Disclosures Received
– 135 from 1/00 to 1/01
– 23 from 1/01 until 3/01
• Applications filed
• 148 applications from 1/00 to 1/01
– 30 applications from 1/01 to 3/01
– Provisional applications filed
• 112 provisional applications from 1/00 to 1/01
• 15 provisional applications from 1/01 to 3/01
– Regular applications filed
• 16 regular applications from 1/00 to 1/01
• 1 regular application from 1/01 to 3/01
• Patents issued
– 8 in 2000
– 2 so far in 2001