Inventor (patent)

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In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.

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Under U.S. case law, an inventor is the one with "intellectual domination" [1] over the inventive process, and not merely one who assists in its reduction to practice. Since inventorship relates to the claims in a patent application, knowing who an inventor is under the patent law is sometimes difficult. In fact, inventorship can change during the prosecution of a patent application as claims are deleted or amended.

"Joint inventors", or "co-inventors", exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work.

Absent a contract or license, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention. [2]

Inventorship

European Patent Convention

Under the European Patent Convention (EPC), identifying the inventor of a given invention is theoretically very important since "[t]he right to a European patent (...) belong[s] to the inventor or his successor in title", [3] according to the first-to-file principle. [4] In practice however, the European Patent Office (EPO) never investigates whether the proposed inventor is indeed the true inventor. Indeed, "[f]or the purposes of proceedings before the [EPO], the applicant shall be deemed to be entitled to exercise the right to the European patent". [5]

Court actions relating to the entitlement to the grant of a European patent must be brought before the national court which has the jurisdiction. The jurisdiction is determined in conformance with the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" or, in short, the "Protocol on Recognition". [6] Once a final decision is issued by a national court adjudging that the applicant is not entitled to the grant of a European patent, the procedure according to Article 61 EPC is applicable.

In contrast with U.S. patent law, the applicant for a European patent need not be the inventor. The right to the European patent may validly be transferred before the filing of the application, e.g. by contract, by inheritance, or as a consequence of the "employee's rights" as determined by the applicable national law. [3] However, the inventor has the right to be mentioned as such before the EPO. [7] The EPO does not verify the accuracy of the designation of the inventor. [8] The inventor may waive its right to be mentioned as such in the European patent application and European patent specification. [9]

Inventorship is traditionally not classified as a patentability criterion under European patent law, in contrast with U.S. patent law. However, inventorship can be relevant to patentability in Europe, although in only a limited way. Where a disclosure is made within 6 months preceding the filing date of a European patent application, the disclosure is not taken into consideration if it was due to, or in consequence of, an evident abuse in relation to the applicant or his legal predecessor. [10] Thus the identity of the inventor (who is often the applicant, or their legal predecessor) can be of vital importance.

United States

In the United States, before the Leahy-Smith America Invents Act (AIA), the inventor or joint inventors had to be named as the applicants. However, under the AIA, that is no longer the only option. [11] This requirement that a patent be issued in the name of the inventors is derived from the intellectual property clause of the United States Constitution:

The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries. (emphasis added)

An inventor is a party who conceived (not just contributed to the reduction-to-practice) at least one claim to a patent. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." Courts recognize that invention is rarely a solitary endeavor. Therefore, conception and "intellectual domination" over an invention is important and "reduction to practice, per se , is irrelevant. One must contribute to the conception to be an inventor." For example, in 1991, consumer group Public Citizen sued the owners of the patent for use of the anti-retroviral compound AZT against HIV Aids, Burroughs-Wellcome. [12] The plaintiffs claimed that several persons at the National Institutes of Health (NIH) who had contributed to the patentable subject matter were not named as "inventors." [13] Controversially, the courts ultimately ruled that the original patent was valid, and no error had been made in excluding the NIH researchers whose work only 'confirmed' the invention. [14]

Generally, conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.." (emphasis added). [15] An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.

The naming of inventors is very important for the validity of the patent. Failing to name, or incorrectly identifying inventors, with deceptive intent, can result in a patent being held invalid or unenforceable for inequitable conduct. [16] Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.

An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assigned before publication. Assignment of rights in a patent does not alter to whom the patent is actually issued. In fact, an assignee may only have an equitable interest in the patent until it is issued and then legal interest would transfer automatically. If the inventor is dead, insane, or otherwise legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor. [17]

An omitted inventor can file lawsuit to have his/her name added to the list of the inventors. Such cases arise very often[ citation needed ] in Universities: see, for example, Chou v University of Chicago and Olusegun Falana v. Kent State University and Alexander J. Seed.

In 2019-2020, the USPTO has grappled with the question of whether an artificial intelligence machine can be an inventor. [18] In a recent patent application, the USPTO rejected artificial intelligence machines as inventors, but has also sought comments from the public. The American Intellectual Property Law Association has come out against a change in the law until the topic is better understood, but others have suggested temporary measures to collect relevant information until Congress takes up the issue. [19] [20]

Compensation of inventors

There are many ways in which an inventor might be compensated for a patent. An inventor might bring the patented product to market under the protection of the monopoly created by the patent. The inventor may license a patent to another entity for an up-front fee, an ongoing royalty or other consideration. The inventor may also sell the patent outright. Henry Woodward, for example, sold his original US patent on the light bulb to Thomas Edison who then developed it into a commercially successful product.

Inventors who are employees of a company generally sell or assign their patent rights to the company they work for. The extent to which they are compensated will vary from jurisdiction to jurisdiction and may depend upon any prior employment agreements that are in place. Under Japanese patent law, for example, an employee is entitled to a “reasonable fee" for an invention. In 2006 Hitachi was ordered to pay an employee $US 1.6 million for an invention the employee made that was commercially valuable. [21] In United States, however, an employee may have to sign over the rights to an invention without any special compensation. Germany has a law on employees' inventions providing strict rules concerning the transfer of rights to an invention to the employer. It also prescribes mandatory compensation of employees for inventions they make. This right to compensation cannot be waived in advance, i.e. before the employer is informed of an invention. [22]

See also

Related Research Articles

<span class="mw-page-title-main">European Patent Office</span> One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

<span class="mw-page-title-main">European Patent Convention</span> International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.

A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing patent applications and oppositions to granted patents.

In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike.

A patent examiner is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and other patent offices around the world.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This hypothetical person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. The person mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking and tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. A patent application can basically relate only to one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the option of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.

Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting of a patented technology without the consent of the patent-holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed or another writing disclaiming rights ostensibly protected by the patent. By extension, a disclaimer may also mean the amendment consisting in introducing a negative limitation in an existing claim, i.e. "an amendment to a claim resulting in the incorporation therein of a 'negative' technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.

Maintenance fees or renewal fees are fees paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations concerning not only the amount payable but also the regularity of the payments. In countries where maintenance fees are to be paid annually, they are sometimes called patent annuities.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

References

  1. ↑ Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965)
  2. ↑ Ethicon v. United States Surgical Corp., 135 F.3d 1456, 45 U.S.P.Q.2d 1545 (Fed. Cir., 1998)
  3. 1 2 Article 60(1) EPC
  4. ↑ Article 60(2) EPC
  5. ↑ Article 60(3) EPC
  6. ↑ EPO web site, Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition) of 5 October 1973 Archived 9 May 2008 at the Wayback Machine
  7. ↑ Article 62 EPC
  8. ↑ Rule 19(2) EPC (previously Rule 17(2) EPC 1973)
  9. ↑ Rule 20(1) EPC (previously Rule 18(1) EPC 1973)
  10. ↑ Article 55(1)(a) EPC
  11. ↑ Resources, MPEP. "MPEP". uspto.gov.
  12. ↑ "Archives | The Philadelphia Inquirer". inquirer.com.
  13. ↑ "The Story of AZT: Partnership and Conflict, by Mark Yarchoan, pages 15-20 (undated manuscript), accessed October 9, 2012" (PDF).
  14. ↑ Riordan, Teresa (November 28, 1994). "Patents; A Court Ruling Extends Burroughs-Wellcome's Monopoly on the AIDS drug AZT". The New York Times– via NYTimes.com.
  15. ↑ Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930)
  16. ↑ "Why listing all inventors is crucial to protecting an invention," Dallas Business Journal, March 5, 2019
  17. ↑ Resources, MPEP. "MPEP". uspto.gov.
  18. ↑ https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf [ bare URL PDF ]
  19. ↑ https://www.aipla.org/docs/default-source/advocacy/documents/aiplacomments_uspto_rfc_patentingai2019nov08.pdf [ bare URL PDF ]
  20. ↑ "Recommended Preliminary Guideline for Handling Artificial Intelligence Inventorship Concerns". patentspace. 26 May 2020.
  21. ↑ Morton, Jeremy, “Employee Compensation in Europe” Insurance IP Bulletin, August 2007
  22. ↑ Sec. 22 Employees' Inventions Act
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