Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman

7 The Patenting Process

      7.1 WHO MAY OBTAIN A PATENT: INVENTORSHIP AND OWNERSHIP OF PATENT RIGHTS

      In the United States, patents are granted only to the first and original inventor or joint inventors who are first to file a patent application describing and claiming the subject invention, or anyone asserting rights obtained from the inventor, such as an employer to whom the inventor(s) are obligated to assign their inventions, such as commonly found in employment agreements. It must be understood that one who merely recognizes the commercial merits of an existing product or idea, or who discovers technology in a previously written document, may not properly be awarded a patent. The invention must have been invented by the person or persons applying for the patent. In the United States, a corporation or business entity can pursue patent protection on a development independently of the inventor, if, as stated earlier, the inventors have agreed to assign patent rights to their employer, usually as a condition of employment. The patent assignment document is usually signed by the employee on the first day of employment, along with tax documents and confidentiality agreements.

      An invention can be made by one, two, or any number of persons. Thus, many patent applications frequently name joint inventors. However, the following important rule must be kept in mind among the joint inventors. Unless there is an agreement or an obligation to assign the patent to one or a few of the inventors, or to a certain third party, such as the employer or a company set up by the inventors, each inventor will end up with the independent right to commercialize the invention, with no duty to account to the other inventor or inventors for his/her actions, or his/her royalties or revenues. This would be true regardless of the percentage of the patent any one joint inventor owns. Also, none of the joint inventors has the right to exclude any of the other joint inventors from practicing the invention, nor to prevent any joint inventor from granting licenses to others under the patent rights.

Normally, the question of ownership of an invention, and of the patent rights covering that invention, are handled in a corporate or large entity environment by obligating all of the inventors to transfer all of the rights in the patents to the employer by way of assignment from the individual inventors. However, if several inventors combine to produce an invention on their own, outside of a corporate structure, for example, it is extremely important that the rights, obligations, and limitations of the joint inventors vis‐à‐vis the invention be defined in a written joint development agreement before the patent application is even filed or ultimately issued to prevent problems in the future. In such cases, the number of inventors may form a separate new entity, such as their own corporation, LLC, or partnership, to which the patent rights are assigned. Then, it becomes the duty of the management of the new corporation or partnership to decide the direction of and limitations on commercialization of the invention, and the distribution of the rewards from that commercialization through prudent corporate management principles. If you find yourself in this situation, I strongly suggest discussing a joint development agreement with your patent professional.

      It is not uncommon for several inventors, working independently of each other, to develop a same or similar invention at the same time, and for each to file for patent protection covering their invention. This is sometimes true, for example, in the pharmaceutical field, where several different companies are seeking a cure or treatment for a certain disease, and have all started with the same known “prior art” treatments. Each of these inventors or groups of inventors may arrive at the same end point independently. In this situation, who gets the patent? Under the recently enacted AIA, the patent is awarded to the first to file a patent application, unless one inventor or group of inventors derived the invention from the second to file, as discussed in section 7.2.1 of this chapter.

7.2 PROPER DOCUMENTATION OF THE INVENTION

      7.2.1 Conception

      The AIA eliminated the previous interference procedure by awarding a patent to the first to file a patent application when two or more inventors or inventor groups have developed the same invention at approximately the same time. However, the AIA now includes a new section 35 U.S.C. §135, which provides a second‐to‐file inventor the ability to have the USPTO correct the inventorship in the first filed application if it can be established that the first‐to‐file inventor derived the invention from the second‐to‐file inventor. Due to the possibility that this scenario can occur, it is important for all inventors to keep adequate records, witnessed preferably, to establish the dates of conception and reduction to practice of the invention before it was “stolen.”

      The act of conception relates to the first concept, idea, or informal description of a working example of the invention. Usually, the first conception of an invention takes place either on a computer screen, on small scraps of paper where the idea was initially set down, or possibly on other media of recording the inventive idea, such as a dictating machine. It is important to record the earliest date of conception because conception followed by diligence in reducing the invention to practice, in a working model or a complete illustration of a working model, would determine the date of invention that the inventor can rely upon in a derivation proceeding. My experience has shown that the initial act of conception can also be proven by presenting evidence of comments made to others in the project control group that they recall, sketches on restaurant or tavern napkins, or stained lab notebook papers.

One comment made earlier is worthy of repetition. Most inventors today work by themselves, in cells or in cubicles, in developing an invention. It is important, however, that early work on inventions be somehow witnessed by others and documented, so that, at a later time, a second party or a document can corroborate your first date of invention. Working alone on your idea without disclosing the same to other people within your working group and not having them witness and sign off on your invention is not recommended practice. Certain corporations with which I have been involved require their inventors to keep notes in lab or log books, and to have each page of the lab or log book dated and witnessed by another person in the group at the end of each day.

      The reason for this exercise is that, whenever an inventor is required to testify in court or any other judicial proceeding that his or her invention has been derived by another, the inventor’s testimony must be corroborated by other documentation or the testimony of live witnesses that the inventor actually did conceive the invention at the time that he or she reported. It is obvious that anyone can sit on a witness stand and testify that they had invented a certain device before someone else, but unless they have proof of such conception, such oral evidence alone will not be accepted by the court. Therefore, keep in mind as you develop inventions throughout your careers that each step you take may have to be ultimately corroborated by someone else or by your documentation, electronic or otherwise, to prove the veracity of your statements regarding conception.

      7.2.2 Reduction to Practice

      The act of conception followed by diligently reducing the invention to practice are the two components that equal the act of invention, which was more important in the interference proceedings that have been eliminated by the enactment of the AIA. However, for derivation proceedings, reduction