INTELLECTUAL PROPERTY PROTECTION

OFFICE OF PATENT COUNSEL

March 16, 2001

INTELLECTUAL PROPERTYPROTECTION

• INVENTORSHIP

• PATENT APPLICATIONFILING PRACTICES

INVENTORSHIP

Francis A. CoochPatent 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

INVENTORSHIPIS

DIFFERENTFROM

AUTHORSHIP

WHO IS AN INVENTOR?

Anyone who contributes to the CONCEPTIONof 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.

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.)

What is CONCEPTION? (cont.)

Wright Brothers

• IDEA• DETAILED SOLUTION• JOINT

INVENTORSHIPIS

DIFFERENTFROM

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

INVENTORSHIPIS

DIFFERENTFROM

AUTHORSHIP

WHO DETERMINES INVENTORSHIP?

Inventorship is a legal determinationto be made by the patent attorneybased on the facts in each case.

WHEN IS INVENTORSHIP DETERMINED?

When the patent application has beendrafted and is ready to be filed – theclaims define the invention(s) forwhich inventors will be determined.

CORRECTION OF INVENTORSHIP

• Good faith error – can be correctedand does not render patent invalid

• Deceptive intent – patent can be heldinvalid

SUMMARY

• Only inventors can apply for a patent• Inventorship defined by contribution

to conception, i.e., to the definitesolution 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 disclosurereview disclosure

• speak with inventor(s)speak with inventor(s)

• perform prior art search/noveltyperform 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