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Topic: Inventorship

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	Yale OCR - Inventorship (Site not responding. Last check: 2007-11-05)
		After the issuance of a patent, amendment of inventorship requires the submission of proof of facts that show lack of deceptive intent in the inventorship error.
		Inventorship may even be amended during a litigation, if the court is convinced that the error in inventorship occurred without deceptive intent.
		Changes in the law during the past 20 years have made it much easier to correct inventorship errors and to avoid the harsh penalty of invalidity that used to occur when inventors were omitted or when non-inventors were named as inventors.
	www.yale.edu /ocr/invent_guidelines/inventorship.html (1233 words)

	Information About Inventorship
		Complex and serious legal issues involving the ownership of a patent often arise when inventorship or the duty of an inventor to assign the patent is not clearly defined.
		Inventorship is a legal concept that is based upon who meets the requirements to be an inventor.
		One final point concerning inventorship is that an individual who has not contributed to the conception of the invention is not an inventor, and is not permitted to be listed on the patent as an inventor.
	www.mic.hawaii.edu /faculty/inventorship.html (1753 words)

	Invention and Inventorship to Potential Investors (Site not responding. Last check: 2007-11-05)
		The conception, in order to qualify for purposes of inventorship, must be such as would enable a person skilled in the art to reduce the conception to practice without undue experimentation or research or exercise of inventive skill.
		To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented.
		One approach that is often used in determining inventorship is to ask the question, "If this idea had not been contributed, would the claimed invention exist?" If not, the person who contributed the idea is probably an inventor.
	www.rgp.ufl.edu /otl/inventorship.html (1140 words)

	M.P.E.P. Section 201.03, Correction of Inventorship in an Application (BitLaw)
		Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a petition under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application.
		Where an error in inventorship is present in a reissue oath or declaration filed under 37 CFR 1.63 and 1.175, the error may be corrected by the submission of a newly executed oath or declaration under 37 CFR 1.63 and 1.175 listing the correct inventive entity.
		However, the retained inventorship must then be corrected by the filing of a petition under 37 CFR 1.48(a) in the continuing application stating that the error in failing to name the additional inventor in the prior application was without deceptive intention.
	www.bitlaw.com /source/mpep/201_03.html (6098 words)

	Inventorship
		The courts have specifically held that authorship and inventorship have different criteria and are not equivalent.
		Inventorship must be considered using the criteria discussed above and must not be confused with authorship.
		A reasonable and responsible decision on inventorship is all that is required.
	www.ucsf.edu /cbe/inventorship.htm (448 words)

	[Commons-law] More stuff on employee rights and software
		Inventorship is significant primarily for determining the patentability of claims and the procedural sufficiency of a patent application.
		Inventorship paradigms are to be distinguished from scientific paradigms as that term is used by Thomas S. Kuhn in his influential essay, The Structure of Scientific Revolutions.
		Inventorship paradigms can be used both as an attempt to describe and catalog inventor-entities (and thus have the attributes of "model") and as a description of the public (or judicial or legislative) perception of inventor-entities (and thus have the attributes of "metaphor").
	mail.sarai.net /pipermail/commons-law/2002-May/000013.html (19169 words)

	Stark v. Advanced Magnetics Inc. (Site not responding. Last check: 2007-11-05)
		The district court held that correction of inventorship is allowable only when "the true inventor was left off the application as a result of a mistake and not as a result of deception, on the part of either the named inventor or the actual inventor." Stark v.
		The panel majority, to be logically consistent, must either conclude that contested inventorships cannot be heard by either the Commissioner or the courts, regardless of what MCV said, or that it has the power to pick and choose which parts of paragraph one are to apply to a court proceeding.
		In Bemis, the issue was whether the alleged true inventor could get the court to correct the inventorship stated in the patent by replacing the named inventor, alleged to have acted fraudulently in procuring the patent in his name, with plaintiff's name.
	lw.bna.com /lw/19970805/961233.htm (4386 words)

	Intellectual Property Office - Think You May Be An Inventor?
		Inventorship is very different than authorship of a manuscript and will be determined according to patent law principles.
		Inventorship is restricted to those who have made a significant intellectual contribution to the invention, including the person who discovered or formulated the concept behind the invention and anyone else who made suggestions to improve the invention.
		Specifically excluded from inventorship are persons who merely followed directions in carrying out experiments or in assembling devices, and who did not contribute significantly to refinement of the idea underlying their work.
	www.ipo.uc.edu /index.cfm?fuseaction=overview.Inventors (612 words)

	COMBINING APPLICATIONS FOR FILING IN THE U.S.
		Typically, the question of joint inventorship is raised when practitioners outside the United States are faced with inventions that are closely related, but are described in separate patent applications listing separate inventive entities in the country of origin.
		as the inventorship of the combination is a separate and distinct issue from the inventorship of the component element.
		One such change relating to inventorship was made in 35 U.S.C. 120, which now allows an application to be considered a continuing application where the inventive entity in the continuing application is not exactly the same as in the parent.
	www.oblon.com /Pub/maier-1.html (2883 words)

	W&D \| Publications \| Client Alerts \| Changes in Patent Office Rules Relating to Inventorship and Continuation Practice
		Thus, according to the Court's ruling, diligence in correcting inventorship of an issued patent is not required as a matter of law, although it may be examined in context with the facts of each individual case.
		Inventorship designation and changes for all filings under Rule 52 are effected in a straightforward manner.
		The recent actions of the Federal Circuit and the Patent office regarding inventorship errors show this to be a changing area of law, and it is not yet clear whether these changes will make it easier or harder for parties to correct errors in inventorship.
	www.wiggin.com /pubs/alerts_template.asp?ID=114337212000 (2323 words)

	University of Denver -- Office of Technology Transfer
		It is, however, not necessary for the inventors to physically work together, for the ideas to have occurred to both inventors at the same time, for each inventor to have conceived the same part of the ultimate invention or made the same type of contribution, or for the inventive contributions to be of equal importance.
		Definitive inventorship determination is done by the patent attorney or agent at the time the patent application is prepared for submission to the U.S. Patent and Trademark Office.
		Institutional investigators involved in the invention disclosure process should understand that preliminary determinations of inventorship made prior to the preparation of a patent application are tentative and subject to change based on the advice of the patent attorney or agent who prepares the application.
	www.du.edu /techtransfer/iptips.html (4139 words)

	Michaud Article
		Joint inventorship under section 116 can only arise when collaboration or concerted effort occurs -- that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts.
		Inventorship also may be disputed in patent infringement litigation to obtain an interest in the patent rights.
		However, a successful inventorship challenge is difficult because of the evidentiary burden of clear and convincing evidence both as to appropriate facts and corroboration.
	www.bakerbotts.com /file_upload/MichaudArticle.htm (3527 words)

	Disentangling Inventorship (Site not responding. Last check: 2007-11-05)
		In the university setting, the determination of inventorship is further complicated by factors such as economic incentives for obtaining patents, political issues associated with inventorship, and the complex relationships between researchers, administrators, university technology managers, and patent attorneys (frequently from outside law firms).
		To mitigate tension, it should be clear that the inventorship determination is being made not by the technology transfer office, but by the patent attorneys hired to prosecute patent applications for the university.
		The invention disclosure form should clearly indicate that the patent attorneys are in charge of the inventorship determination, and contributors with questions should be directed to the attorneys rather than to the university technology managers.
	www.autm.net /pubs/journal/01/disentangling.html (2866 words)

	SEARCHING FOR AN EFFICACIOUS JOINT INVENTORSHIP STANDARD
		Given the minimal and rather vague, thus unpredictable, standards for determining inventorship, the current state of the law fosters uncertainty and apprehension regarding the contributions of various researchers or team members participating in the inventive process.
		Efficacious rules for joint inventorship may achieve equity by avoiding extremes of claim counting, refraining from one catch-all standard for all fact patterns, and instead relying on case by case analysis.
		The court can develop multiple rules for joint inventorship, as cases demand, in which the rules for determining inventorship are specific and adapted to contextual concerns, such as inventive entity, inventive context, and technical field.
	www.bc.edu /schools/law/lawreviews/meta-elements/journals/bclawr/44_1/05_TXT.htm (9791 words)

	UTI Inc. - Inventorship Is Different From Authorship
		Inventorship differs from authorship inas-much as its minimum standards are often not met by authorship contributions.
		Basing inventorship decisions on the same factors as those which determine authorship may signifi-cantly hamper, if not preclude, faculty members, and hence universities as their assignees, from obtaining valid U.S. patents.
		Suggestions from another...must have furnished such information to the person to who the communica-tion was made that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put the improvement to successful operation.
	www.uti.ca /inventorship.htm (1822 words)

	Inventorship
		Inventorship, on the other hand, is a legal concept only partly coincident with the individuals who contributed intellectually to the invention.
		Inventorship is often viewed by the scientist who has recently come from academia as essentially the same as authorship.
		Barb is the sole inventor because she described the structural concept, including a valid synthetic approach, and suggested the use of the proposed compounds.
	www.udel.edu /ccr/patent/inventor.htm (950 words)

	WEB PATENT NEWS--April, 2002
		I. In the U.S., inventorship (who is the inventor?) and ownership of a patent (in whom do the patent rights vest?) are different concepts.
		Inventorship is earned by conceiving (thinking up) a complete and operable invention (MPEP 2138.04).
		In summary, inventorship and ownership are important issues to inventors and their employers.
	www.webpatent.com /news/news4_02.htm (1212 words)

	Getting Inventorship Right the First Time
		Before delving into the law of inventorship, however, it must be emphasized that inventorship is strictly a legal question that must be determined by a patent professional.
		The claims of the patent are used as the standard for determining inventorship, be it an individual or a group.
		A further requirement is that the application to correct the inventorship must be diligently made after the discovery of the error.
	www.tms.org /pubs/journals/JOM/matters/matters-9406.html (814 words)

	2137.01 Inventorship - 2100 Patentability (Site not responding. Last check: 2007-11-05)
		Foreign applicants may need to be reminded of the requirement for identity of inventorship between a U.S. application and a 35 U.S.C. priority application.
		1976) (in regard to an inventorship correction: "[a]s between inventors their word is normally taken as to who are the actual inventors" when there is no disagreement).
		The definition for inventorship can be simply stated: "The threshold question in determining inventorship is who conceived the invention.
	www.synesisdiagnostics.com (1051 words)

	[No title] (Site not responding. Last check: 2007-11-05)
		Although the panel majority disclaims the relevance to inventorship of the invention that is claimed, the disclosure to the examiner concerning the claimed invention is accurate and adequate, and not grounds of inequitable conduct.
		However, they are extremely relevant to inventorship, and it is on inventorship that the ruling of inequitable conduct was grounded.
		However, the court can not ignore the correct inventorship, for when inventorship is correctly viewed as directed to that which is claimed, the information that the district court held should have been disclosed to the examiner is not material.
	www.ipo.org /AMTemplate.cfm?Section=20004&Template=/ContentManagement/ContentDisplay.cfm&ContentID=9190 (7130 words)

	FindLaw for Legal Professionals - Case Law, Federal and State Resources, Forms, and Code
		A. Standing to Sue for Correction of Inventorship under 35 U.S.C. As a preliminary matter, we agree with the defendants that Chou was obligated to assign her inventions to the University.
		Since inventorship on such applications normally follows the inventorship designation in the originating country, the district court, if it concludes on remand that Chou is properly an inventor of the disputed subject matter, can instruct the University to take appropriate action to change the inventorship designation on the foreign patent applications.
		Since, as we have indicated, the inventorship of the foreign applications is in effect determined by the inventorship of the U.S. patents, we need not dwell on that claim.
	caselaw.lp.findlaw.com /scripts/getcase.pl?court=fed&navby=case&no=001317 (6733 words)

	LEGAL STANDARDS FOR INVENTORSHIP (Site not responding. Last check: 2007-11-05)
		Conception is the touchstone of inventorship, that is, the completion of the mental part of invention.
		The second element to inventorship is the reduction of the invention to practice.
		Inventorship determinations are often very difficult, dealing as they do with subjective impressions, but it is hoped that the readers of this short piece will now have a better grasp of what constitutes inventorship under current legal standards.
	www2.ari.net /foley/mbinvent.html (718 words)

	Schubert & Associates, lawyers in Austin, TX, Texas (Site not responding. Last check: 2007-11-05)
		Sole inventorship occurs when one person conceives the solution to the problem, the means to the desired end, which constitutes the subject matter of the invention.
		In determining inventorship and originality, the focus is primarily upon who conceived the physical structure with new products or the operative steps with new processes that solves the problem at hand, but aspects other than structure may be of importance in determining patentability.
		Generally, the proper inventorship entity must actually file the application even though the underlying ownership rights in the application and any patent to be issued thereon have already been assigned to another.
	www.schubert-iplaw.com /article.jsp?practArea=25&articleIndex=2 (642 words)

	liibulletin: PerSeptive Biosys., Inc. v. Pharmacia Biotech., Inc.
		Whether intentional falsehoods, misinformation, and omissions on the subject of inventorship are "material" as a matter of law, and thus form the basis for a district court to render otherwise valid patents unenforceable.
		A party's intentional falsehoods, misinformation, and omissions on the subject of inventorship are "material" and may form the basis for rendering a patent(s) unenforceable.
		The court denied PerSeptive's motion under 35 U.S.C. to correct inventorship after finding that the named inventors repeatedly made false statements and misrepresentations to the PTO concerning the inventorship and timing of the innovation.
	www.law.cornell.edu /patent/comments/98_1325.htm (807 words)

	Schulze v. Green
		After the dismissal of the motion to correct inventorship, the preliminary statements were opened and it became apparent that, by Green’s own admission, Green could not prevail on priority.
		Nevertheless, for the reasons stated post, the inventorship issue, having been fairly raised by Appellants, was still within the scope of issues for decision in the interference even after the APJ dismissed the defective motion.
		Appellants also argue that the APJ intended to remove the inventorship issue from further consideration in the interference when he vacated the initial discovery order, and for this reason too, Green’s motion for judgment based on that issue was improper.
	www.ll.georgetown.edu /federal/judicial/fed/opinions/97opinions/97-1219.html (3454 words)

	Chou v. Univ. of Chicago
		Joany Chou appeals from the decision of the United States District Court for the Northern District of Illinois granting Bernard Roizman and Aviron Company’s motions to dismiss her claims for correction of inventorship, declaratory judgment of inventorship, fraud, breach of fiduciary duty, unjust enrichment, breach of express contract, and breach of implied contract.
		The district court determined that Chou lacked standing to seek correction of inventorship under § 256 because she could claim no ownership of the patents, having surrendered all her rights to the University under an employment agreement.
		The defendants respond that Chou lacks standing to sue for correction of inventorship under § 256 because she was obligated to assign her inventions to the University by virtue of accepting employment under the University’s administrative policies.
	www.ll.georgetown.edu /federal/judicial/fed/opinions/00opinions/00-1317.html (6763 words)

	§ 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. ...
		If the nonprovisional application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634.
		If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.
		See § 1.324 for correction of inventorship in a patent, and § 1.634 for correction of inventorship in an interference.
	www.uspto.gov /web/offices/pac/mpep/documents/appxr_1_48.htm (1086 words)

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