Patent Reform and the Ethos of the American Inventor

PatentLawPic138Although I understand the reality that most patent prosecution is handled on behalf of corporate assignees, I still hold a special place in my heart for the maverick American inventor.  Some might understand the slight pangs I felt when reading the inventorship section of the Senate report on patent reform.  The report suggests eliminating from the law “the antiquated notion that it is the inventor who files the application, not the company-assignee.” Perhaps it is time my thoughts of the American inventor to go the way of the Wild West and horse drawn carriages.

The Bill (S.1145) is intended to fix an understandable problem — that of inventors who fail to fulfill their contractual obligation to assign patent rights to the Corporate owner.  This is a serious problem as shown by the current issue of IPToday which includes a full-length article describing the complex set of hoops currently required to overcome these so called “problem inventors.” [LINK]

Beyond the sound-bites, the specific reform provisions are not so bad. The revised statute would allow an “obligated assignee” to file the patent application on its own behalf. An inventor’s oath is still required unless the “obligated inventor” is either unable or unwilling to sign. Under the provision, a patent cannot be challenged as invalid or unenforceable based on a corporations mistaken claim that the inventor had an obligation to assign.  The savings clause appears to also include protection against mistakes in correctly naming inventors in the application.

72 thoughts on “Patent Reform and the Ethos of the American Inventor

  1. I ‘ve got a question, what if the inventor assigns his invention to some really corrupt parties, the patent gets a Final Rejection -the inventor has provided the alleged company attorney and his alleged assignee partner with the appropriate way to file – BOTH ignore the inventors technical advise because the assignee unknown to the inventor had his contract drawn up by a lawfirm who failed to acknowledge a conflict with a company that the inventor sent his NON Proviosional spec to(however the provisional was filed 11 months 22 days prior to) – the inventor decides to write up his own response and file at the USPTO(as the applicant) so that his corrupt assignee, lawyer and corrupt company cannot avert FRAUD and the USPTO – allows the PATENT,

    WILD WEST RIGHT,

    Opinions ?

    Opin

  2. “Patent pirates most certainly conducted a smear campaign against Jerry Lemelson. It was just as outrageous as the troll campaign.”

    Poor Jerry Lemelson.

    LOL.

  3. “Patent pirates most certainly conducted a smear campaign against Jerry Lemelson. It was just as outrageous as the troll campaign.”

    Was it a smear for the Federal Circuit to point out that, without any explanation on his part, Mr. Lemelson unreasonably waited over thirty years from his original filing dates to present claims to cover bar-code-scanning technology?

  4. link to patentlyo.com

    “Posted by: Paul F. Morgan | Mar 25, 2008 at 11:20 AM

    “Anonymity seems to supported even for active lobbyists. In 1999 a major lobbying opponent of patent reform was an organization alleging to represent “small inventors” in general. In spite of reasons to believe that they were being secretly funded by particular individual abusers of the patent system [NOT large corporations] it proved impossible to force them to disclose who was actually funding them.”

    The organization you are referring to is the Alliance for American Innovation. It is a group of inventors, mostly commercially successful inventors who are intent on preserving a fair, affordable, and accessible patent system.

    As you can see from the sig file below the Alliance for American Innovation (AAIUSA.org) is alive and well and the Professional Inventors Alliance is a DBA of AAIUSA. Yes, we are the same people who tied the patent deform people in knots from 1991 to 1999. We are inventors who are really tired of companies who lie, cheat, and steal. Companies who flood the patent system with narrow incremental improvements in a vain attempt to accomplish with quantity what they are incapable of doing with quality.

    We learned quickly that if big companies could find a lever that they would try to destroy any small business which had the gall to oppose patent deform. That is why we structured our operation so that corporate stooges could not identify our members who needed to remain anonymous.

    We were self funded. For example, I expended over a million dollars in that fight. Many other inventors and small businesses also made huge expenditures relative to their size. We each paid our own way.

    Patent pirates most certainly conducted a smear campaign against Jerry Lemelson. It was just as outrageous as the troll campaign.

    I most certainly would have welcomed Jerry Lemelson with open arms but his attorneys insisted that he stay away from the patent reform battle. And he did stay away.

    Contrary to the submarine smear campaign the real source of excessive delays with a very small percentage of Jerry’s roughly 600 patents was the USPTO. As I recall the USPTO was responsible for 26 years of delays.

    It seems to me that Paul F. Morgan is misinformed about these issues.

    Ronald J. Riley,

    Speaking only on my own behalf.
    Affiliations:
    President – http://www.PIAUSA.org – RJR at PIAUSA.org
    Executive Director – http://www.InventorEd.org – RJR at InvEd.org
    Senior Fellow – http://www.patentPolicy.org
    President – Alliance for American Innovation
    Caretaker of Intellectual Property Creators on behalf of deceased founder Paul Heckel
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  5. “Defector writes: “The ONLY person capable of definitively stating the origin of a particular invention is the inventor. Therefore, how could you endorse a statutory scheme that allows a third party to do so — particularly a third party that has a very real pecuniary interest in the determination?

    “This terror already has been endorsed. Rule 1.47(a) presently permits other co-inventors to sign on behalf of the non-participating/unavailable inventor. Rule 1.47(b) presently permits the assignee to advance the application with no participating/available inventors.”

    –That’s the exception, not the general rule. Just because under limited circumstances we allow a person to assert ownership of an invention by virtue of an employment agreement does not mean that it should become an everyday occurrence.

  6. We must stop living in the past wile cheating our inventors of credit for their work. Pulling out obscure supposed invention evidence from the past is strictley fraudulant we have to ask ourselves if it was so good back then then why dident it become reality back then.Manufacturing of evidence alleging previous unfiled patentable concepts undermines the Financial rewards system and destroys the incentives to create.

  7. Our present first to invent system needs to be retained except for the right to backdate after original filing.This results in ip thefts. Adopting my match it or scratch it plan that involves 60 days advanced notice of intention to file finds the correct inventor when no devulgement occured it restricts the number of filers to those devulged to by accident or evesdroping. This plus inventor security paid for by business associated with patents. Will eliminate terrorism caused by greedy mobs of ip theftors that attack and threaten inventors.This plan also gives notification that someone is attempting to steel your intellectual materials. Master lists of all invention under manufacture at present and updated weekly will allow quick checks to establish patentability. By recording intellectual materials before r+d begins invention held within the secrecy of the mind will ensure that the correct inventor will recieve credit and theftors will be foiled at last. patents that have expired can be reissued to compensate inventor(s) who have bewen denied justice,Also reissuance will stimulate the economy to elimanate recession.Other changes needed are the need to eliminate searches before filing and perfection of all claims each intellectual material willbe credited to the only filer at the deadline unless devulged then awarded by master inventor status when disputed.also needed is the end to ip rights loss at 1year as present policy dictates. New law allows 20 year ip registry th discourage thefts at 1 yr.

  8. With the massive reduction in Marketable ideas entering the patent office it should be obvious to all that the existing constraints placed on inventors have already left a severe blackhole in invention. The corresponding increase in trash filings making up the balance illustrates the need for original grading to determine priority.Until we eliminate all obsticles to the inventor the incentive to create will be destroyed. The problem is this proposed legislation does nothing to determine the circumstances that the alleged agreement was struck under. Duress ,threat of murder,intimidation, termination from employment,the original job classification at hiring ,the fact that the invention created by those hired is not actually theres and they send employees to steal and therorize master inventors to steal their ideas.In order to create a fair law we should adopt a reform act that Recognizes these problems and establishes a partnership between employer and employee 33%inventor66% corporation.

  9. “The Bill (S.1145) is intended to fix an understandable problem — that of inventors who fail to fulfill their contractual obligation to assign patent rights to the Corporate owner. ”

    Those of you practicing Patent Law solo are a forgotten almost extinct group who are dispised by the Corporate slaves who seldom ever see their Inventor who gave birth to the IP that enables your work product which in turn allows you to practice your profession.

    The cavete the Corp insists on each and every Inventor sign prior to disclosure leaves the Inventor at the mercy of the powerful Corporate Lawyers and now You are preparing to further take unfair advantage of the struggling inventor by removing the major legal concept (first to invent) and thereby discarding the one obstackle to greedy Corp theft of the true owner of the IP.
    You have forgotten that the IP was nonexistant until the Inventor came forth with his contribution to the art.
    The flood of pat-app will indeed inundate the USPTO ; but what the heck, The Practioner already does most all the work from the preparation of the pat-app to the issueing thereof and all the commissioner has left to do is punch a button and the entire process of prosecution is circumvented and the IP issued as Letters Patent. Now thats real peogress. Further Affiant sayeth nought.

  10. Regarding the notion of the IP regime existing to protect inventors … no. Anyone is free to start his own business, to go into academia, to dig ditches by day and invent in his garage by night, or just put his dreams aside and post disgruntled messages on patent law discussion boards. Those who choose to contract away thie rights to their inventions — ie., accept employment offers clearing stating “the condition is that the things you invent for us belong to us (that’s why we’re hiring you and paying you!)” — eschew those other paths.

    Note that the proposed legislation doesn’t act as an mindless assignment process — there’s no rights transfer taking place under it unless and until the company-filer can make the required showing that it already holds equitable title. I have no doubt that the regulations will require the same notice attempts to the inventor that Rule 47 currently imposes. And the same declaration saying affirming those notice attempts, to put the declarant on the hook in the event of dishonesty. Considering it’s the patent attorney sending notices to the lost inventor, are there any attorneys here willing to risk their registration numbers by signing knowingly dishonest declarations?

  11. e!, may I ask generally what technology you examine? I imagine some techs have far longer/messier claims than others.

    I’m open to providing a clean version (as an exhibit and with language stating that I made best efforts to get the words accurate but will be limited only to my marked-up version in the formal amendment text, ‘natch). But I wouldn’t want to bother an Examiner who doesn’t feel it necessary.

  12. @Veteran Attorney: “Not to be antagonistic, but why do you want to see clean claims?”

    The USPTO OCR software has trouble with marked up claims. I’m a moderately fast typist, but twenty pages of claims still take a fair chunk of time to retype. That time would be better spent examining.

    I realize it’s important that we can see the differences that amendments introduce, so it would be necessary for a clean copy to be a second copy. Some applicants *do* include clean post-amendment copies, for which I am thankful.

    Hopefully the entire issue will be resolved once the office switches to the promised electronic file wrapper system. If not, perhaps the office will get around to requiring a clean copy (in addition to a marked-up one) in the next rules change, whenever that may be.

  13. re. leopold ip regimenes have never been about giving inventors their moral due; from the massive amounts of intellectual materials stolen from myself I believe what you say is true the problem is our legal system is supposed to guarantee liberty and justice for all not injustice and if you dont like that more injustice. Re. minagery yes like smoke mirrors a maze of glass an illusion unobtainable this is what our present system is for inventors.

  14. att caveMan I invented one or two psychiatriac medicines with my former psychiatrist Dr, greiling in Pt.Huron michigan.I think one was prozak if it was invented around 1980. Also invented the concept of the psychiatric physician with this same physician.I also invented valume with bannow pharmacy in mt. clemens mich and a huge list of other drugs and original diritives. with reguards to spell check i invented every singloe concept reguarding the internet and its operation so this is surely included

  15. re. leapold I believe our constitution has been improved by subsiquent legislation that recognizes the industrial revolutation capitalism and the importance of financial rewards for those who are able to better our lifestyles and make life more compfortable and less disease poverty manual labor ect such as we now have.Ip regimes have always been about steeling from inventors not any fair compemsations to them in line with corporate greed and terrorizing.This is the unfortunate consequence of corruption that is american business

  16. Ayn Rand certainly didn’t have any objection to the patent system. Hank Rearden apparently had several patents.

    “Then I grew up.”

    Can’t even begin to imagine what Malcolm was like before he grew up. :-)

  17. re caveMan,s ostensible comment.Your predicial ignorance is truley neandrathal. My megagreat grandfathers should have never tought your tribe to use fire.This was probably your familys first stolen invention.Reguarding your question on patent reform passage. I Have raised considerable constitionality questions reguarding the bill and indicated my new legislation will vastley improve the system this should send the thing to the trash bin hopefully or a few provisions anyways.The main cause of our current recession is the banks worry about loosing control of deposited funds due to potential patent instability. instead of investing in my new ideas they invested in inflated housing and overpriced existing companies that should have had settlements paid to me due to incorrect inventorships.The recession could turn into a full fleged depression. By adopting my new patent reform plan this can be reversed and we can return to inventative world leadership.

  18. “Also incorect is that Ip does not exist before filing. Invention held within the secrecy of the mind is the original idea that our patent system has made worthless By the minagery of methods the system has to loose it.”

    Those ideas held within the secrecy of your mind would be no more valuable in the absence of our patent system, and probably less so. Intellectual property is government-created, for better or worse. It doesn’t exist in the state of nature of Hobbes/Locke/Rousseau/Hume. The notion that IP has some meaning outside of the regulatory context is even more absurd than the suggestion that the Constitution guarantees inventors the right to profit from their ideas.

    Since the enlightenment, IP regimes have been about benefitting society at large. Before the enlightenment (and in the enactment of the DMCA), IP regimes were about rewarding friends of the monarchy. They’ve NEVER been about giving inventors their moral due. Except those silly moral rights that European nations recognize.

    Minagery?

  19. Re ideas are cheap concept:ideas that are cheap are old ideas,no good ideas and stolen ideas. Good ideas are rare and valuable.However in our present and proposed the systems actual inventor will be incorectly defrauded. This of course destroys the incentive to create thereby denying the world the usage of the most important inventions. Investing in good ideas is not risky at all its a sure thing. The willingness to pay the inventor is the risky thing that causes the inventor to not produce at all.Recognition of good ideas is the key to sucesful investing.Also incorect is that Ip does not exist before filing.Invention held within the secrecy of the mind is the original idea that our patent system has made worthless By the minagery of methods the system has to loose it.

  20. “I’ve read “The Fountainhead”, although it was before law school. ”

    Like most of us, I read Ayn Rand early in high school.

    Then I grew up.

  21. I used to think I wanted clean claims as well on amend. Now I realize that nah, not really. Sometimes they can get messy, but on the whole the amendments draw the tiny little line in the limitation that the app is wishing to pursue, so I can see it quicker and smack it down, or accept it all the faster.

  22. “Read ‘The Fountainhead’ again. The IP belongs to the inventor; and remember the Co. does have shop rights in spite of the Co. employed Lawyers being unable to prepare a bullet proof Contract between the Inv./Co. at the outset.”

    I’ve read “The Fountainhead”, although it was before law school. If you don’t like working for the “Co.”, then of course you’re free to go live in some secret, utopian community.

    The problem with the notion that “IP belongs to the inventor” is that IP (in the patent space, anyway) doesn’t exist until someone files an application, and it only exists as long as someone pays for prosecution, maintenance, etc. Marshalling resources (i.e., cash) to pay for all this is something that companies do well, and individuals (generally) do poorly. Pooling risk is also something that companies do well, and that individuals can rarely afford to do. Bulletproof or not, contracts assigning future patent rights to the employer are often the most efficient solution, and are not violative of some natural order, Ayn Rand notwithstanding. For what it’s worth, I don’t think Ayn Rand was opposed to the freedom of contract…

  23. “Ideas are cheap. Investing in those ideas is expensive and risky. That’s what companies are for – assembling factors of production (including ideas) in an efficient manner. Individuals usually don’t have the assets, or the risk tolerance, to do it.”

    ———Now just hold on a sec.. Read “The Fountainhead” again. The IP belongs to the inventor; and remember the Co. does have shop rights in spite of the Co. employed Lawyers being unable to prepare a bullet proof Contract between the Inv./Co. at the outset. This proposed idea of “first to file” is opening up a bucket of wormes that will spell disaster ; Mr. Commissioner; you just think your creation of the present backlog is unmanageable; just wait till the backlog becomes a log jam. The real solution to all this insane inapt leadership is to throw the bureaucratic gears into reverse and go back to the time we had no insurmountable problems.

  24. e!,

    Not to be antagonistic, but why do you want to see clean claims? Doesn’t seeing the underlining and bracketing allow you to more quickly determine what amendments have been made to the claim? (Although that can get quite messy.)

    I have a vague recollection of the practice of providing a clean copy of claims being permitted under the old amendment rules (two rule versions ago), or maybe under the current rules, but with the proviso that the practitioner was stuck with the clean claims if there was a discrepancy.

    You can always as the practitioner to provide you a copy off the record. Some may agree, some may not.

  25. As an examiner what I’d love to see — most of all — are clean copies of amended claims.

    (Just in case anyone’s looking to make my job easier.)

  26. Att. CaveMan according to my theory I invented everything so far seriously studied. This applies only to the original inventive concept and subsequent additional sub inventions where nessesary.These ideas were taken by various methods after verbalization In some cases I can form strong links to the invention in some cases weak links and in some cases no links initially at all. You can imagine the difficulty in trying to recall circumstances immediately when the volume of inventions in question is so massive and correct inventor trail has taken several turns.Also excuse my spelling if was fully involved with the creation of spell check it might work much better! As far as prozac goes this may be the drug that turns people into zombies so I would not care to be credited with it or the lack of testing before release.

  27. Does anybody know if the current recession will increase or decrease the chances of patent “reform” passing?

  28. Mr. Thomas, notwithstanding your ostensible grandeur, you are clearly not the inventor of the spell checker, or Prozac for that matter…

  29. Mr. Thomas, notwithstanding your ostensible grandeur, you are clearly not the inventor of the spell checker, or Prozac for that matter…

  30. The first problem with this proposed legislation reguarding employee signoffs is the use of duress in obtaining the Original employee signature signing off his intellectual material rights.The second is there can be only one inventor of an invention except for discoveries or experimental observations.The third is the lifetime signoff gustapo type deatht hreat type signoffs. As the amounts of money at steak increase the methods of terror become more sinister.I was the victum of many incidents of this terror because I am arguabley the worlds only inventor of original inventive concepts.Fortunatly this is rare because if they sign off they arent going to have any ideas anyway however they will be denied the rights to my stolen intellectual materials.Obvious these agreements are unconstitutional due to the abolition of slavery.

  31. In order to find the actual inventor we must first determine the creator of the original intellectual materials before research or development begin. Non devulgement to anyone is key in establishing and recognizing master inventors and properly crediting their contributions to human advancement.My new patent system requiring 60 days advanced notice of intention to file allows anyone who believes they were the first inventors to file a patent in the catigory to contest the original filers patent before he files. Like wise those who dont have a clue what the invention is will be left saying dah! This system retains the good parts of first to invent with the elimination of the race to the patent office and elimination of back dating to steal inventions.

  32. Defector writes: “The ONLY person capable of definitively stating the origin of a particular invention is the inventor. Therefore, how could you endorse a statutory scheme that allows a third party to do so — particularly a third party that has a very real pecuniary interest in the determination?”

    This terror already has been endorsed. Rule 1.47(a) presently permits other co-inventors to sign on behalf of the non-participating/unavailable inventor. Rule 1.47(b) presently permits the assignee to advance the application with no participating/available inventors.

  33. reposted here, from under a different and older topic I put it.

    A simple, yet drastic way to get the issue before the examiner right up front and make sure that there is no “hiding the invention”:

    Answer: Do not allow the applicant to add or amend the claims (other than to cancel or rewrite in independent form). Even raise the # allowed with the basic filing to accommodate this to maybe 40(?) with 1 independent per statutory class that the applicant wants to (and supports) claim. That way, the everybody knows what needs to be searched and claimed. Even allow preliminary amendments prior to any 1st action (gives you guys time to “refine” your claims better). Still allow continuations, etc.
    As an addendum, if you want to to change what is claimed, or add any new limitations, you would have to abandon the original case & file as a CIP (not continuation). Enforceability of the new claims is only as of the time they are filed, though the applicant would still be entitled to the effective filing date the new claims have support for with respect to prior art (Yes, these are changes to CIP which would have to be put in place).

    Just a random idea on a Friday afternoon.

    thanks,

    LL

  34. “Does it matter who the inventor is? Of course, because that is the person to whom the patent is granted, by operation of the Constitution! … [Unlikely scenario omitted] … I have now legally stolen an idea from a competitor.”

    I take exception only with the [Unlikely]. Clearly Mr. Bloom is not familiar with tech recruiting.

  35. BTW, at the risk of sounding condescending, there’s nothing “complex” about swearing behind a reference…

  36. Occam’s razor says that the simplest explanation is usually the best. When “issues” get too “complex” and there is a “call for reform,” the simple explanation is that cynical forces are trying to destroy the U.S. patent system. If you’re referring to me being condescending, remember, I’m just a simple cave man.

  37. “black/white, consistency, predictability, safety, risklessness, are the hobgoblins of little minds…”

    “where there is absence of risk, there is absence of opportunity.”

    Another hobgoblin of little minds is addressing complex issues with glib platitudes and condescension.

  38. black/white, consistency, predictability, safety, risklessness, are the hobgoblins of little minds…

    where there is absence of risk, there is absence of opportunity.

  39. “Perhaps it is time my thoughts of the American inventor to go the way of the Wild West and horse drawn carriages.”

    Not so fast Dennis; where have you been?

    Threats of “Patent Reform” and “first to file” legislation have been around since will before I first started sniffing around in the patent world a couple of decades ago. They never pass. Just like the “new rules” hoo haa at the PTO failed.

    Don’t get me wrong, I personally don’t oppose reasonable measures to improve PTO operations. But a wholesale sellout of what makes America the great bastion of entreprenuership that it is? I don’t think so.

    Don’t let yourself become “institutionalized.” Keep that maverick spirit alive.

    Its a little place south of the border, a place they call Zeywateneo, they say the Pacific has no memory…

  40. “The employer is the wrong entity to rely upon in making a determination as to who an inventor is since the employer cannot see into the mind of the employee to see if he or she actually created the invention. That is why you need a legally-binding statement from the inventor as to who the inventor is. I don’t see how I can be any clearer in setting forth my argument.”

    Well, I guess I disagree with your contention that the invention is necessarily locked away in the mind of the inventor until s/he chooses to reveal it in an patent application. The inventor has lab notebooks, reports to superiors and subordinates and, often, coinventors.

    The Senate Report seems to be largely aiming at situations where a group of inventors at a company invents something, but not all of them can be tracked down or made to sign the oath/declaration. Under those circumstances, if one or more of the inventors is involved in the application process, then it seems that your concern would go away.

    Even if none of the inventors are involved in the application process, however, there’s often likely to be enough of a paper trail at the company that the company can file a patent. If the company’s patent attorney has too little to go on, then the application simply shouldn’t be filed. Moreover, the company will have a tougher time in prosecution if it can’t find anyone who knows what was actually invented.

  41. I am not suggesting the patent rights cannot be contracted away. What I am suggesting is that in order for the inventor to contract his rights away, you must first establish that he has the rights. Who cares that the employer can prove that the inventor’s patent rights have been contracted to the employer if the inventor has no rights to begin with? The employer is the wrong entity to rely upon in making a determination as to who an inventor is since the employer cannot see into the mind of the employee to see if he or she actually created the invention. That is why you need a legally-binding statement from the inventor as to who the inventor is. I don’t see how I can be any clearer in setting forth my argument.

  42. Defector writes: “The Constitution requires that patents be granted to inventors. This is not just an “assumption” on the part of the Constitution, it is a *guarantee* to “Inventors” that “exclusive Rights” would be “secured” to them for their “discoveries.” The language is clear.”

    This is certainly true, but as with many other rights, that one can be contracted away, which is why the PTO would require a showing by the corporation that the inventor had, in fact, done so.

  43. Leopold, good points, of course. However, I could easily conceive of a scenario (however unlikely) wherein an inventor describes an invention that he stole, to his employer without ever suggesting that it was his idea and for no personal gain on his part, and the employer reasonable assumes that the employee created the invention himself and files on the employee’s behalf, in which case there would be no culpable party. Sure, the application is technically invalid, but it still presumed valid by the court until proven (by the actual inventor, presumably, and at great expense) otherwise.

    The scenario is an illustration of my central point which is simply that since invention occurs inside the mind of the inventor, only the inventor has the capacity to state with certainty whether he created the invention or not, and therefore, I personally like the idea of putting his a** on the line (so to speak) by having him sign an Oath/Declaration. The Constitution requires that patents be granted to inventors. This is not just an “assumption” on the part of the Constitution, it is a *guarantee* to “Inventors” that “exclusive Rights” would be “secured” to them for their “discoveries.” The language is clear. By operation of the Constitution, therefore, establishing who the inventors are is of paramount importance, since all rights flow through the inventors. The ONLY person capable of definitively stating the origin of a particular invention is the inventor. Therefore, how could you endorse a statutory scheme that allows a third party to do so — particularly a third party that has a very real pecuniary interest in the determination?

  44. I barely ever comment, but I couldn’t leave this one be.

    Roger Karp said “Per Jon Dudas in a talk a couple of years ago, less than 5% of all patented inventions are ever commercialized.”

    Sorry, but given everything going on, why in the world would anyone trust anything Dudas says in any way whatsoever? I’m starting to think he’s a compulsive liar, at least in his official capacity. Lies about rules impact to the OMB, lies to Congress, lies about patent quality, lies about the administrative record, lies about past activities of the PTO, lies about the backlog.

    He might be right about commercialization, it certainly is a low number. But he got lucky if he happened to spout off something truthful for once.

  45. “Does it matter who the inventor is? Of course, because that is the person to whom the patent is granted, by operation of the Constitution! … [Unlikely scenario omitted] … I have now legally stolen an idea from a competitor.”

    Let’s not confuse PROCEDURAL processes for establishing inventorship with the underlying LEGAL issues regarding ownership. Yes, the Constitution assumes that inital ownership of a patent vests with the inventor. (This was not a huge innovation.) But the Constitution is not concerned in the slightest with bureaucratic procedures for establishing inventorship and/or ownership.

    In the scenario given by defector, the company hasn’t “legally stolen” anything. Rather, they’ve had a fraud perpetrated upon them by the employee, and the patent is invalid. Unless the employer knew or had reason to know that it not the employee’s invention, in which case the employer/applicant has committed fraud, and the patent is invalid. What’s the big deal?

    The policy question is where to place the burdens of establishing and/or proving ownership. Given that very few patents are ever asserted or challenged, it makes sense to reduce the up-front burdens.

  46. Here, here! Let’s keep the inventors at heart and in mind.

    And in response to an earlier commenter, going to a first-to-file system does not require eliminating flesh-and-blood applicants. The main consequence of going first-to-file would be the elimination of interference proceedings (except for disputes over derivation, which are only a small fraction of the proceedings we have now). Going first-to-file would save us bargaining chips in international treaty negotiations as well. There are plenty of more important issues. The senior party almost always wins anyway.

  47. To elaborate a little more on my earlier post. The bill proposes to “allow a substitute statement to be submitted in lieu of an inventor’s oath where either the inventor is (i) unable to do so, or (ii) is both unwilling to do so and under an obligation to assign the invention.” So the question is, who is or should be entitled to sign such a statement on behalf of the inventor? The act of inventing occurs in the mind of the inventors. If an employee were to come to me with a great idea but refuses to sign an Oath, maybe it is because he stole the idea from a previous employer and doesn’t want to perjure himself. Well, this bill would make it ALL OK, because now I can file by saying this guy is the inventor and therefore I (by virtue of being his employer) now own the invention. The inventor may go off somewhere else and be unreachable and I have now legally stolen an idea from a competitor. Woohoo!!! Like I said in my previous post, this provision would make bad law. The inventor should be required to sign some sort of statement attesting that he or she actually conceived of the invention.

  48. Lets break this down:

    The status quo of an inventor(s) filing an Oath or Declaration establishes that he/they read the disclosure and claims and certifies that he/they is/are the inventor(s). If the inventor is taken out of the loop, and is no longer required to sign, then we really don’t know who the inventor is. Does it matter who the inventor is? Of course, because that is the person to whom the patent is granted, by operation of the Constitution! So, I would argue that the status quo already allows an employer to file an application, (they do all the time) but requiring the inventor to sign an oath or declaration is an important link in the chain of ultimately assigning ownership, and therefore should not be abandoned.

    As for powers of attorney, IMHO, the status quo of having the inventor sign the power of attorney is foolish and unnecessary. I would also argue dangerous, from the standpoint that it may lead the inventor to believe that the attorney works for the inventor and not the employer. If the attorney is being paid by and owes his duty to the employer, of course he needs to make clear the nature of his relationship and ethical duties to the inventor, but IMHO, it is much simpler and cleaner just to have the employer sign the PoA, not the inventor. Of course, this requires some proof of ownership on the part of the employer…

  49. only 5% are commercialized? thats a shocker. nearly every single thing I work on ends up as a patent number on a commercial product.

    as for first to file…. I like the white/black order to it. no more interferences or swear behind affidavits. simple. and everyone knows what the rules are / result is.

  50. “Are you saying that out of a company’s portfolio of 1000 patents only 10 are valuable?”

    Depends on the company, but yes, that’s what I’m saying. At least viewed individually, from a rate of return perspective, which is the only perspective that should matter for a corporation. In aggregate they’re helpful in intimidating other companies into licensing them. But that’s something the individual inventor can’t do – another reason not to give the employee a stake.

    “Does my auto insurance policy have zero value because I’ve never made a claim?”

    Of course not. But if you have 1000 insurance policies on 1000 cars, the 990 liability policies covering cars you never drive are pretty close to valueless.

    ip-esq:
    Some of the better companies do (or at least did) something like what you suggest. I believe IBM used to give special awards (sometimes involving very large sums) for patents that turned out to be especially valuable.

  51. Per Jon Dudas in a talk a couple of years ago, less than 5% of all patented inventions are ever commercialized.

  52. Leopold Bloom,

    Point taken. In the scenarios I am familiar with. Employee inventor is on a patent assigned to company. Company pays nominal amount to inventor (over and above salary) for just being an inventor (let’s say $1,000). Then, if later is turns out to be a 90M a year patent. The Company has a royalty scheme and pays a small amount (maybe .25%) to Inventor.

    That amount is small for Company but think of the morale of inventor. To the average worker that is life changing money. I think the end would promote a R&D department to really take charge and try to move things forward for the possibility of that type of earning.

    Finally, more to the point of the posting. I believe there would be much less arguing who is obliged to assign, etc. between company and employee.

    But, I do see your point.

  53. “the constitution does give the patent to the inventor – so how the heck can someone else file and prosecute it?”

    Why can’t my twelve year old buy a loaded hand gun at the local gas station? The Constitution says he has every right to do so.

    /steroid scalia off

  54. “Everybody wants a piece of the rare valuable patent. Nobody wants to pay for the 99% that turn out to be worthless.”

    Are you saying that out of a company’s portfolio of 1000 patents only 10 are valuable? That looks like a litigation statistic rather than one of valuation. The USA has 1000s of nuclear missiles. Are they all valueless because they’ve never been launched? Does my auto insurance policy have zero value because I’ve never made a claim?

  55. ip-esq:

    Your proposal (Inventors receive a piece of the money – percentage, etc.) would only make sense if the inventors paid their share of the prosecution and maintenance costs. Everybody wants a piece of the rare valuable patent. Nobody wants to pay for the 99% that turn out to be worthless.

    Ideas are cheap. Investing in those ideas is expensive and risky. That’s what companies are for – assembling factors of production (including ideas) in an efficient manner. Individuals usually don’t have the assets, or the risk tolerance, to do it.

  56. One item that seems to be at the forefront of the inventorship issues and assignment and companies that assert rights over employee inventors, etc. stems from the assertion (correct or not) that companies “steal” ideas and make substantial amounts of money based on those ideas leaving the inventors thier 50K salaries.

    So, maybe the U.S. should mimic Germany and other non-US countries where there are regulations that Inventors receive a piece of the money (percentage, etc.).

    That way, eveybody (company, inventors, attorneys) are on the same team and it is in everyone’s interest to have a successful patent scheme.

    My two cents…

  57. “The direct implication of the constitutional grant is that the inventor must file – and your isses with your engineers cannot change that.”

    There’s no such implication. But even if there were, there surely isn’t any implication that the inventors could not transfer their rights in the invention or their ability to file. So if there is such an agreement creating an obligation to transfer (implied via employment or expressly written in an agreement), then why shouldn’t the patent laws give the ability to file to those employers having the benefit of that obligation to transfer? It’s inefficient to resort to litigation to enforce that obligation under contract and it’s also time consuming to track down former employees who wouldn’t contest the obligation. This reform makes sense.

  58. “The Constitution discusses filing?? Actually, it says something about granting to inventors. But what if, by virtue of his explicit employment agreement or implied employment agreement, the employed inventor has agreed to transfer his ability to receive the Constitutionally-permitted grant to his employer? It’s the employed inventor who is “throwing away” that ability to receive the Constitutionally-permitted grant because the employed inventor could have refused the employment.

    You can talk policy, but don’t try to distort the Constitution.”

    Then the employer needs to really get in gear and make sure they are employing the right folks, and there is no need for a change in the patent law to support that. That is a contract issue, not a patent issue or a constituional one.

    Agreed, the constitution does give the patent to the inventor – so how the heck can someone else file and prosecute it? The direct implication of the constitutional grant is that the inventor must file – and your isses with your engineers cannot change that. I am in house now, and have talked to the old guys and they have never seen this – thus there are likely very few cases where any issue arises. This seems to me kinda like the patent rules – making a sweeping change based on the exception instead of the rule.

  59. Having spent much time in the Sci3 patent library in Sunnyvale, I can attest to the fac that there are many individual inventors out there doing their own applications. However, “many” in the face of nearly 400,000 applications is still a tiny, tiny fraction.

  60. Paul Morgan is right. Heaven help ROW when US-based corporations are as quick to file on inventions as their counterparts elsewhere in the world.

  61. My compliments Dennis. What an interesting topic for discussion. It exposes (yet again) the chasm between civil law and common law jurisdictions. The European Patent Convention gives the right to the patent to the Applicant for the time being, with the burden of proof lying with the aggrieved shut-out rightful inventor. Seems like USA currently has the burden the other way around. But civil law jurisdictions have no Rules of Evidence and have difficulty distinguishing evidence from attorney argument, so can deal rather brusquely with entitlement issues. In a common law jurisdiction (recent cases in England make this point) entitlement is a nightmare to litigate, so is worth putting in issue, so will more frequently increase transaction costs.

    BTW, still don’t understand the restrictive reading of the US Constitution. Even the European Patent Convention, Article 60 begins “The right to a European patent shall belong to the inventor….” but we still get by OK with FTF and Assignee filings.

  62. Although it should be obvious to any patent attorney, in view of some above concerns, please note that this pending legislation still makes it perfectly clear that naming the correct actual inventors on a patent appplication is still legally required and essential to patent validity. Furthermore, all employed inventors would retain their existing rights to check all their assignees published patent applications and to provide proofs to the patent attorneys, and then to the PTO if still disatisfied, that they should have been named as inventors on that application.

  63. “The problem with first-to-invent is that it also throws away the words of that old document, the Constitution, which gives the right to file to the INVENTOR!”

    The Constitution discusses filing?? Actually, it says something about granting to inventors. But what if, by virtue of his explicit employment agreement or implied employment agreement, the employed inventor has agreed to transfer his ability to receive the Constitutionally-permitted grant to his employer? It’s the employed inventor who is “throwing away” that ability to receive the Constitutionally-permitted grant because the employed inventor could have refused the employment.

    You can talk policy, but don’t try to distort the Constitution.

  64. The far more common need for assignee filings is procrastinating corporate scientists and engineers who delay reading and signing their patent applications so long that patent rights are lost to others. [Even after forcing provisional application filings.] Or others who delay application filing dates by arguing over trivial changes in specifications, trying to add names of lab managers who are not proper joint inventors, etc., etc. Outright refusals to sign assigned-invention applications are much rarer.

  65. “A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.”

    Sufficient proprietary interest – anyone know what that means? If I win a civil judgment against an individual and have a lien put on their property/estate, can I then file on anything I can determine that they’ve invented? Is the “proof of the pertinent facts” carried out ex parte before the Office, without including the inventor in the proceedings?

    I think we should probably stick closer to the Constitution on this one.

  66. Agreed Dennis! The problem with first-to-invent is that it also throws away the words of that old document, the Constitution, which gives the right to file to the INVENTOR!

  67. So – here’s a question. Is there a provision wherein the patent filed by the “obligated assignee” would revert back to the “obligated inventor” when it was shown that no valid obligation had existed?

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