Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
will be covered in more detail in Chapter 5.
4.1.4 The Invention Must Be Non‐Obvious as Compared to the Prior Art
The U.S. patent statutes, and most patent statutes throughout the world, state that, even though there are differences between the invention attempted to be patented and the prior art, if those differences would be mere obvious manifestations of the technology by one skilled in the art to which the subject matter of the patent relates, patent protection may not be obtained. The determination of obviousness is rather difficult to those uninitiated in dealing with patents, and Chapter 6 is dedicated solely to the history, and technical and legal determinations, involved in showing how the standard of unobviousness plays an important role in the granting and enforcement of patents.
4.1.5 The True Inventors Must Be Named
In the United States, patent applications must be originally filed setting forth the names of the inventor, or inventors if there are more than one, or in the name of a business entity to which the inventor or inventors are obligated to assign their invention, possibly pursuant to an employment contract or other agreement. The application, upon filing, can be immediately filed in the name of the company for whom the inventors work. Also, if the inventors have decided prior to filing the application that they desire to assign the rights either equitably among each inventor, or to other individuals, the application may be filed in the name of each inventor or such other individuals or company. However, it is important to know that, in the United States, the true inventors must initially be identified in a patent application data sheet that accompanies filing of the patent application. These inventors must be the true inventors of the subject matter claimed to be novel and non‐obvious in the patent application. A signed assignment document may be filed for recording in the USPTO along with the initial patent application, or later, in which document the inventors assign their rights over to their employers or others.
Regardless of assignment, it is imperative in the United States that the actual inventor or inventors be named in the application documents. The patent laws do not allow those to be named as inventors who did not contribute to the conception or reduction practice of the invention. In several instances during my years of practice, politics within a business environment have resulted in inventors being named who had nothing to do with the actual conception or reduction to practice of the invention. This should be avoided. After the patent issues, and the owner attempts to enforce the patent against an infringer, the acts of invention by the named inventors will be part of the discovery and trial testimony in the case. If it is ultimately determined that the individuals who are named are not the inventors, the patent’s validity and/or enforceability could be jeopardized. Therefore, when working with a patent attorney, the inventors must ensure that all of the proper inventors be named, and also be sure that those who are not inventors do not appear on the application as inventors.
To determine the identity of actual inventors on a project that involves several people, I have applied a simple test, which you may also find useful. The addition of technical features to an invention usually does not qualify as contributing to the “invention.” Thus, one who can take a sketch appearing on a piece of paper, and create a workable and valuable product, composition, or other item from the sketch, is normally not named as an inventor. By contrast, an inventor starts with a blank piece of paper and places the sketch on the sheet, which the technician eventually works from. Therefore, in determining who are to be named as inventors in a patent application, it is important to determine who started with the blank sheet of paper, and who acted only in a purely technical capacity and carried out the invention that was actually conceived and reduced to practice by others. In complying with this requirement of the patent law, management should understand that there is no room for politics in the naming of inventors in patent applications.
4.1.6 Brief Commentary on Notable Recent Developments Attempting to Determine Patentable Subject Matter
Several years ago, upon the development of mathematical algorithms for use in computer software, the USPTO refused to grant patent applications on such algorithms, since they were considered to be merely abstract mathematical expressions that existed before. However, as protection for such embedded software became important to business and society, the interpretations of Patent Laws were changed by the courts and the USPTO to include some such algorithms, and the machines that use these algorithms, within the scope of patentable subject matter under certain conditions. Due to the complexity of this issue, Chapter 13 explains the present status of the patentability of computer‐related inventions in deeper detail.
Additionally, courts have previously held that living organisms could not be the subject of a patent. However, at present, modified living organisms that are the product of genetic engineering, e.g., human intervention, can be patented, except that people cannot be patented. The products of genetic engineering that are patentable must satisfy all the other conditions for patentability, including usefulness, novelty, and non‐obviousness. Two examples are: the Harvard Mouse, which has been genetically engineered to be more susceptible to certain strains of cancer for purposes of medical research (see U.S. Patent No. 4,736,866); and, second, certain genetically modified organisms which can absorb oil to clean up oil spills that occur when a tanker or pipeline accidentally splits open (see U.S. Patent No. 4,259,444).
Today, the whole subject of genetics falls within the scope of patentable subject matter, and discussions are continually ongoing about the patentability of the results of the Genome Project, which was recently completed. It is my prediction that, in the future, additional patent laws or court decisions will be required to determine which newly developed subject matter may be patented, and which may be available for public use without restraint, as medical procedures are today. The subject matter of biotechnology patents is discussed in detail in Chapter 14.
Prior to 1998, methods of doing business did not fall within any of the categories of patentable subject matter. However, the State Street decision in 1998 (State Street Bank & Trust v. Signature Financial Group, 149 F.3d 1368 (Fed.Cir. 1998)), by the U.S. Court of Appeals of the Federal Court, held that methods of doing business, whether or not implemented using a computer or software, may also be patented, provided all of the other conditions for patentability are met. One such example of a patent that embodies a business method and which has been litigated in court is a patent covering the method of ordering a product online using a single click of the mouse rather than a double click. The patentability of business methods is discussed in Chapter 15.
The law relating to patentability of inventions in each of the three genres—computer‐related inventions, life science inventions, and business methods subject matter—has been vacillating sinusoidally recently. Therefore, you and your patent professional may find it worthwhile to file a patent application covering an invention that does not, or may only marginally, meet the current criteria for patentable subject matter, with an eye toward the future that your patent claims may be found to cover a new, not‐yet‐determined category of patentable subject matter. As of this writing, certain stakeholders in the U.S. patent system, such as the American Bar Association Intellectual Property Law Section and the American Intellectual Property Law Association, among others, have proposed specific legislation to Congress to clarify what is and is not patent eligible in these three areas. Your patent professional will keep you updated as to any relevant changes enacted by Congress.
4.2 UTILITY — THE INVENTION MUST BE USEFUL
As briefly touched upon previously, under the Constitutional mandate of Article 1, Section 8, patents can only be granted for advances in the “useful” arts. Following this directive, the USPTO and the courts have determined that a patent cannot be granted