105 thoughts on “Joint Inventorship

  1. You might have noticed that the “personal bar” aspect of 102 has been removed by the AIA.

    Not only is this plainly evident in the title of the section, but there is also congressional records of this intent.

  2. Thanks for the good-humo(u)red response LB. What I’m trying to recall is something in the AIA about the courts having regard to how legal concepts introduced by the AIA are understood in other jurisdictions, and in that context striving for harmony. As I write these words it really does not seem very likely though, I must say.

    Is “on sale” (in AIA 102(a) but not in pre-AIA 102(a)) qualitatively different though. I mean, how many customers does it take? For example, if I’ve found just one: would that be enough to prejudice novelty?

  3. Is there not somewhere in the AIA a reference to the EPC (or at least to “harmonisation”)?

    I can assure you that if there was, it would be spelled properly. (I’m joking.) I stand ready to be corrected, but I’m not aware that Congress was particularly concerned with harmonizing the definition of “available to the public” with our friends across the pond. I wasn’t aware that any differences were a significant problem.

  4. Excellent answer thanks LB. For European readers there are no words in the entire EPC that are more fundamental than “made available to the public”. I had supposed that the EPC it was, which inspired their entry in the AIA. So it is a surprise to me that, in the AIA, these words mean something very different from what they mean in the EPC.

    Is there not somewhere in the AIA a reference to the EPC (or at least to “harmonisation”)?

  5. Good afternoon, Max.

    I’ll take a stab at your question. Under the old law, the text of 102(a) included “known or used by others”… Despite the plain meaning of those words, the interpretation of that was generally that disclosure to more than a single person was necessary. An example from an old casebook:

    Prior knowledge as set forth in 35 USC s.102(a) must be prior public knowledge, that is knowledge which is reasonably accessible to the public. The knowledge required by s.102(a) involves some type of public disclosure and is not satisfied by knowledge of a single person, or a few persons working together. Nat’l Tractor Pullers Ass’n v. Watkins, 205 USPQ 892 (N.D. Ill. 1980).

    I think Ned’s favorite case, Pennock, has something to say about this as well.

    The new section 102(a) uses different language: “otherwise available to the public.” I’m not fully up to speed on the new prior art provisions, but I suspect that this language was chosen to more closely approximate the settled understanding of “known to others” under the old statute. I think there is some legislative history that suggests that the “otherwise” language was also chosen to suggest that the “available to the public” was to be understood as similar in kind to the preceding items: “described in a printed publication, or in public use, on sale,…”

    I think I’ll stick with my original answer, despite your concerns about its effects on EPC jurisprudence – the mere emailing of the idea to a single person, without more, is not sufficient to create novelty-defeating prior art. (Under at least the old law, however, it does create 102(f) art for the recipient, per my extended discussion with Ned.) I don’t recommend that your clients do it, however.

  6. Dennis, I beg your indulgence.

    Upthread, I posed a question. What I was driving at is that your fact matrix includes the possibility that A’s mail to B puts the invention into the prior art, so after one year A can’t patent it and nor can B.

    Till now I have seen no attempt to answer it. I wonder, is my question too difficult, or too far off the mark. It seems to me that it is on point and so I am puzzled why nobody answers it. Can you? Would be most grateful. Here it is:

    “Thanks LB. While you are busy on your files, perhaps another can tell me under the AIA whether “made available to the public” is a criterion and, if so, what does that form of words encompass.

    I ask because (if I understand LB aright) it cannot mean under the AIA what it has meant since 1973 in Europe. Putting it another way, is an unfettered and enabling disclosure of subject matter to one member of the public enough to render that subject matter part of the prior art, or is one not enough? If so, is disclosure necessary to an arbitrary (capricious) number of members of the public >1? Why?”

  7. Ned, I think that makes really good sense, as a practical matter. Just be sure you have those assignments in order.

  8. LB, the way I view it, if inventor A invents, and inventor B makes an improvement, and both apply, claiming both the basic invention and the improvement, they are joint inventors regardless that they never knew each other, worked together, or whatever, at the time the improvement was made. All B needs is knowledge of A's work.

  9. LLB, if the IDS is submitted on filing so that a first action allowance based on the novelty of coating is not possible, I will concede this point. Otherwise, I think tthere is willful and intentional fraud because Beatrice knew the coating was not her discovery but it was also otherwise not prior art. She needs to make this abundantly clear on filing. If not, throw the book at her.

  10. LB, the invention described in the specification must, I think, describe the coating as prior art and the buffer as an improvement. If the examiner is put into the position of having to search for the novel coating, and if he cannot find it, allow the claims without further ado in a first action allowance, I think that is enough for inequitable conduct.

    The question whether intentional fraud can be cured is another topic. I am of the view that it cannot be cured. Mere non disclosure is of potentially relevant patents does not arise to intentional fraud, and the new reexamanination procedure should be effective to cure that. But not intentional fraud.

  11. Phhhhft.

    (Yet again) you misfire.

    Or perhaps this is where you show your class and just tell the wrong people to “just shut up?”

  12. So what is then that you consider ‘classy,’ and what the F did you mean by your comment to me with that word?

  13. Phhhfft.

    You’ve managed to misfire yet again Leopold.

    Obtuse. Is it on purpose? (said in the best Andy Dufresne tones)

  14. Do you consider scat to be more classy? Is that what buys your silence?

    I think both scatological humor and sexual innuendo can be pretty amusing, if not overdone. As to my “silence,” I’m pretty sure that the “archives” will show that I’ve also been known to employ a defecation metaphor in reference to some of your most odoriferous posts.

  15. The answer to your question is no. ‘Binding’ is not the right word. It may be compelling. Or it may not be.

    But that rather misses the point of my response to you, doesn’t it?

  16. Who knows why. Maybe just because lots of people like to paint them blue and it would be more likely a jury would find infringement. Don’t forget that there could be other claims in the patent application, so putting “blue” on one would necessarily limit other claims.

    Also, the biggest reason is to find a fact pattern that matched every possible answer.

  17. Gotcha – you are having Alfred pursue the entire item based on the asserted non-inventiveness of Beatrice’s contribution.

    Very much then, like a ‘paint it blue’ dependent claim, why bother with such?

  18. Just basing it on the other recent Malcolm reference point Leopold.

    Do you consider scat to be more classy? Is that what buys your silence?

  19. It’s interesting that you understood it differently.

    That’s why the right against self-incrimination is waivable.

  20. Again with the sexual innuendo…

    And the peanut gallery thinks this “classy” and remains mute.

    Sure.

  21. Interesting that you like (but still criticize) my idea for not going far enough, when I go twice as far as your post at 8:28 AM.

  22. Why do you think your answer is any different than NWPA’s?

    The reply fits equally well from you to him, as from me to you.

  23. LB, if they jointly apply, and they are not joint inventors as to some claims although they each contributed to others, is the patent invalid? I think we changed the law in he mid ’80s to cover that.

    I don’t know the answer for sure, Ned, but why would they jointly apply if they weren’t collaborating? If they jointly apply, absent some really peculiar circumstances I think that we would likely presume joint inventorship.

    Not to get overly semantic, but Section 116 says that if there is joint inventorship, there must be joint application. It doesn’t actually say that there can’t be joint application without joint inventorship.

  24. LB, if they jointly apply, and they are not joint inventors as to some claims although they each contributed to others, is the patent invalid? I think we changed the law in he mid ’80s to cover that.

    See, Section 116 which reads,

    “When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”

    So, if they are not joint inventors, and I don’t know how if they each contributed subject matter and jointly apply, is the patent invalid?

  25. So, in other words, the buffer isn’t an invention so A can claim it and not violate the declaration. And, we get the answer of A only, which was may goal.

  26. Anon: I said what I meant and meant what I said.

    The novelty could be in the coating. So, examiner is willing to give a patent for the coating and A just sticks on extra element of the buffer. The point is that the reason he could put it in his application (assuming he knew that B said it before he put it in the application) is that it is OBVIOUS.

    Consider this: A invents a bicycle. B says wow, I love that bicycle, and I think it would look neat in blue. Would that prevent A from claiming the bicycle with an extra element of the bicycle being blue? I don’t think so. It may not be the best claim but this fact pattern means the answer A for Dennis’s question is possible.

    Verstehe?

  27. Don’t you think it a bit strange if the application described the coating as new, and that the invention was the combination of the new coating and the new buffer, but then she submits an IDS admitting that the coating is not new?

    Why would the application describe the coating as new? That strikes me as a peculiar way to write an application. The claim is to A+B+C. Explain what A, B, and C are, explain how you put them together to get A+B+C, and (carefully) explain why this combination is really cool. There’s no need to identify particular pieces as “old” or “new” – you’re claiming the combination, not the pieces.

    IDS’s are not admissions, Ned. In any case, if Beatrice submits the email/notebook with an IDS, thus putting it into play as 102(f) art, then there’s no misconduct.

  28. Don’t you think it a bit strange if the application described the coating as new, and that the invention was the combination of the new coating and the new buffer, but then she submits an IDS admitting that the coating is not new?

    I think the oath the one files means something.

    I think the misconduct occurs when one files a claim one knows one does not have a right to claim, or makes a materially false statement knowing it to be false at the time one said it.

    The application must be structured on filing admitting the coating is old or else there is a problem with the oath. I do not agree that one can overcome this problem with a later admission to the contrary.

  29. Interesting idea, but it might not go far enough. Let’s assume that whether there is joint inventorship or not actually matters, e.g., in that it affects title to the resulting patent. Do you think this agreement is binding on a federal judge resolving this issue?

  30. LB, if the patentability depends upon Grandpa Alfred’s invention, she cannot claim it as part of her own. She can claim it in the form where she admits the old compound is not hers, and that she is only improving it.

    Since when do we claim particular “parts” of a combination as being our own? And where is the legal basis for a requirement that you “admit” that part of a combination is not yours?

    We’re in agreement to the extent that Beatrice has to disclose Grandpa Alfred’s notebook, and that it can be 102(f) prior art against her, which means that the addition of the buffer layer has to be non-obvious over the coating. But she doesn’t have to admit anything, and she doesn’t have to describe the Alfred compound as old.

  31. LB, if the patentability depends upon Grandpa Alfred’s invention, she cannot claim it as part of her own.  She can claim it in the form where she admits the old compound is not hers, and that she is only improving it.

     
    If she files the application without describing the Alfred compound as old, and claims the novel coating as part of her invention when she did not invent it and she knows she did not invent it, then we have, I think, an invalid patent from the get go.  More than that, it should be held unenforceable.
     
    In the new AIA with 102(f) repealed, the patent is valid because 102(f) is repealed.  One does not have to actually invent what he patents in our brave new world. 
     
     
     
     

  32. I like the following exchange better:

    Alfred: Hey Beatrice, we are collaborators on this invention, right?

    Beatrice: Yes Alfred, we are, and thus we both agree that we are joint inventors. Here, I have this in writing for both of us to sign.

  33. Due to several law changes, that is not much of a practical problem any more. Incorrect inventorship can now be easily corrected and doesn’t render the patent invalid. So we’re at the same place as Europe when it comes to situations “where the inventors in dispute were all contractually bound to the Applicant company, for example.”

    Another way that the AIA has improved the patent system.

  34. The obviousness of what you ask paints the rhetorical tool of feigned ignorance in stark contrasts.

    Translation: “Here’s some gibberish to ponder why I pull my pants up.”

  35. Your wrong on this one WJD unless the patent applicants can show a significant improvement in there new chemically altered formula aliviating symptoms safely then neither one of the inventors deserves a new patent the test being test market results and clinical studies

  36. Pretty sure doesn’t have to be any collaboration for it to be joint invention. Too lazy to look it up, but my memory tells me that none is needed.

  37. Thanks LB. While you are busy on your files, perhaps another can tell me under the AIA whether “made available to the public” is a criterion and, if so, what does that form of words encompass.

    I ask because (if I understand LB aright) it cannot mean under the AIA what it has meant since 1973 in Europe. Putting it another way, is an unfettered and enabling disclosure of subject matter to one member of the public enough to render that subject matter part of the prior art, or is one not enough? If so, is disclosure necessary to an arbitrary (capricious) number of members of the public >1? Why?

  38. You betcha there will be justice for all not just the rich and powerful. Calling all trolls and lawsuit investors restore americas greatness and defeat the greedy1%ers

  39. A’s email then really did burn his cake because B is a member of the public and A’s email to her puts A’s idea into the state of the art, against which novelty and obviousness falls thereafter to be judged. If B’s additional buffer is obvious variant of A’s idea then there can be no inventor at all because there is no invention.

    While I wouldn’t recommend it, I don’t think A’s email alone is enough to make his idea prior art, except under 102(f) of the old law, which would only be effective against B.

    Now I really must get some billable work done.

  40. I think Michael and Michael sock-puppet anon should write a pro-se Complaint together. I bet it’ll be great.

  41. Not at all. But there has to be some “jointness” to the effort. If we imagine that the email said something like the following, then there would likely be collaboration, in my view, and joint invention:

    Dear Beatrice:
    While we’re both employees of BigCorp, we’ve never met, and never will, since I’m retiring tomorrow and moving to a remote tropical island with no Internet service. However, I know all about your research, and I think you’re the best equipped to finish the problem I’ve been working on. I’ve developed a really neat coating to be used on pills that include the amazing new cancer-fighting drug that BigCorp has developed. I think the coating is patentable in its own right, but it’s not of much practical use (at least for this drug) unless we have a good buffer layer. I’m thinking that the materials you’re working with might be applicable, but I’m missing something… Can you think about this and let management know what you come up with?

  42. Thanks for that LB. Good to know. Now let’s consider another possibility, that Beatrice has no contractual link to Alfred, direct or indirect, explicit or implicit.

    A’s email then really did burn his cake because B is a member of the public and A’s email to her puts A’s idea into the state of the art, against which novelty and obviousness falls thereafter to be judged. If B’s additional buffer is obvious variant of A’s idea then there can be no inventor at all becaan use there is no invention.

    Only kidding. I think.

  43. I have not taken the time to read the above thread exhaustively but I suspect that in the USA inventorship has to be rigorously resolved even before there is any property (eg duly issued and not invalid claim) valuable enough to trigger a dispute about ownership.

    Due to several law changes, that is not much of a practical problem any more. Incorrect inventorship can now be easily corrected and doesn’t render the patent invalid. So we’re at the same place as Europe when it comes to situations “where the inventors in dispute were all contractually bound to the Applicant company, for example.”

  44. Gee, and I thought we were talking about joint invention, which requires collaboration. I wonder how I got so far off track?

  45. “some value to the EPO type of claiming” writes NWPA.

    Lost me there NW. By “EPO type” I suppose you mean the two part c-i-t form of claim. That form of claim is required only for performing the EPO’s obviousness analysis. The problem of determining inventorship remains. Mind you, a c-i-t claim does expose the “point of novelty” relative to the D1 reference and perhaps the PoN is a good starting point for starting the inventorship debate.

    Europe regards as the “invention” the subject matter that is defined by a specific claim, taken as a whole. Europe regards the inventorship entity as the “actual devisor” of that subject matter. I guess that “devisor” begs the question but so be it.

    What Europe also does is to separate strictly issues of ownership from issues of inventorship. This allows it to de-couple inventorship from difficult disputes over ownership rights (where the inventors in dispute were all contractually bound to the Applicant company, for example). I have not taken the time to read the above thread exhaustively but I suspect that in the USA inventorship has to be rigorously resolved even before there is any property (eg duly issued and not invalid claim) valuable enough to trigger a dispute about ownership.

  46. Thanks Leopold, but what was that phrase… ?

    I think you did a magnificent job of answering the question: “who can get a patent at all under various scenarios that are not given in the fact pattern”?

    (in reference to your insertion about collaboration)

  47. it might be possible for Alfred to have this claim if Alfred were to assert that the buffer was obvious over the coating

    Do you mean that Alfred would need to assert that the buffer was not obvious over the coating?

    If it were obvious over (admitted) prior art, you might have a small 103 issue.

  48. Shocking but true NWPA (hence my comment about improvement patents and 101 above).

    Also goes to the point of how inane it would be to attempt to come in sideways and attempt to graft a ‘use’ requirement (a la SHIELD) into patent law, without reconciling 101 and what a patent actually is (that is, a negative right).

  49. But couldn’t B file and say that the invention is the improvement of adding the buffer layer. Claims may afterall recite elements that are not new.

  50. I am going to have to put a note on my Post-it (TM) notes that invention does not actually require attempting to solve a particular problem.

    True, but collaboration does. See, e.g., Burroughs Wellcome v. Barr Labs, 40 F.3d 1223 (Fed. Cir. 1994) (“A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed.”)

  51. I believe the claim under discussion here is to the combination of a novel coating and a novel buffer. Beattrice puts both elements into the claim. She is claiming the novel coating as part of her invention.

    I understand you, Ned, but I disagree with your approach. The novelty of the individual elements is not relevant to inventorship of the combination. If there was no collaboration, i.e., some element of working together, then Beatrice alone is the inventor of the combination. But, Alfred’s novel coating is prior art as to her invention, per 102(f), assuming old law, and may preclude a patent to her claim, per 102(f)/103. If there was collaboration, on the other hand, then Alfred and Beatrice are co-inventors of the claim, because they were working together to come up with that combination, even though Beatrice put the finishing touch on it, and Alfred’s novel coating is not prior art.

    Let’s take this to an extreme. Assume Beatrice finds a never published notebook of her long-dead grandfather Alfred – the notebook describes a novel coating for a pill. Without recourse to a seance, Beatrice comes up with the idea of adding a really cool buffer layer to the novel coating. For the sake of argument, let’s assume that the buffer layer wouldn’t stick if it weren’t for some interesting characteristic of the novel coating. Beatrice files a patent application claiming only the pill+coating+buffer. Is Alfred a co-inventor?

    I think not. What do you think?

  52. LB, I think one of us is adding facts to the situation that we need to discuss. I believe the claim under discussion here is to the combination of a novel coating and a novel buffer.  Beattrice puts both elements into the claim. She is claiming the novel coating as part of her invention.

    If, on the other hand, she is claiming a novel buffer for an old coating, I think her claim may take a different form.

    Sent from iPhone

  53. Alfred conceived the idea of the pill eith a new form of coating, and sent it to Beatrice, who included the ‘buffer’ feature into the pill. The claims cover both the novel coating conceptualized by Alfred as well as the buffer layer suggested by Beatrice, hence both have contributed to the claimed subject matter, making them co-inventors of the invention.

  54. WJD: you are not wrong, but since the coating is new too, Alfred could be a named inventor as well since he did contribute to the claim.

    The only apparently wrong answer would be Alfred by himself, but even here it might be possible for Alfred to have this claim if Alfred were to assert that the buffer was obvious over the coating and B merely just blurted out something obvious.

    For example, if A invented a new bicycle and B said wouldn’t it be nice if it were red, then A could ignore B and still put colors in dependent claims. Painting the bicycle with colors was part of the plan.

    So, I think we have all three answers of: A, B, and A & B as possibly correct. Not sure if there is a fact pattern that would make neither possible.

    By the way, this is a real problem that occurs in design meetings at corporations where often a chief designer is doing all the heavy lifting and the sharks circle and try to nip away some territory with obvious improvements. I have been in more than meeting where this has caused great friction.

    My advice to A: sit down and figure out the obvious improvements and write them down before sharing. My advice to B: if it is fairly obvious what you did, then leave it to A and go and try to do something useful.

  55. It is also a good experiment to ask what is the invention in that as others point out what if the buffering is an obvious improvement over the coating? What if it is obvious but difficult to design around and B is allowed the claims based on the coating in the notice of allowance?

    In my view, many of these problems are occurring (again) because of the fundamental dishonesty that is being used in arguments to try and burn down the patent system at least for information processing methods. In this case, we have reached the point where people don’t even put in backgrounds.

    I guess we can all see there is some value to the EPO type of claiming.

  56. It’s a good thought experiment. Certainly, B could file a patent application with coating + buffer layer without A assuming no contractual law. The key point for B would be that her claims would have to include the buffer and not have claims that only had the coating without the buffer. Then B’s patent is a simple improvement patent and the fact that B is disclosing A’s invention is a contractual/tort problem and not a patent issue since I see no duty that is being breached by B to the patent office. B disclosing A’s invention in a patent would be no different than B posting it on the Internet.

    Good to think about, though, as it is a situation that could arise.

  57. Lets hope patently-o”coment section is not only for cival rights preditorizing subserviant slave driving duress agreement enforcers who are thieving intimidating industrial goons calling legal enforcement patrollers trolls who are the only potential source of recieving any money for the inventors for there brilliant conceptions without which all human advancement stops hopefully thats not you WJD is it

  58. The obviousness of what you ask paints the rhetorical tool of feigned ignorance in stark contrasts.

    You must be a glutton for self-flagellation.

  59. anon: You overstate what Beatrice has done.

    Here’s what WJD wrote: Beatrice’s invention encompasses elements α+β (the coating + the buffer)

    Here’s the fact pattern: After reading the email, Beatrice has the idea of an additional buffer layer surrounding Alfred’s coating.

    How is WJD’s characterization of what Beatrice did an “overstatement”?

    This can be thought of in reference to recent discussions about having some type of “use” requirement. To highlight this, modify the fact pattern such that Alfred did file and obtain a patent on “A” only. Suppose then that “B” is patentably distinct. Do you deny a patent to Beatrice in light of the patent to Alfred? Can Beatrice even make or use without Alfred? Can you invoke this type of sui generis law apart from (and without severe damage to) 35 USC 101?

    Can someone please translate into English?

  60. Can you invoke this type of sui generis law apart from (and without severe damage to) 35 USC 101?

    LOL. Well, there’s the citation to a statute that you asked for, WJD. Is that any better than what you got from Michael R. and his three grandfathers?

    The answer to your question is that you’re not wrong, unless there is collaboration between Alfred and Beatrice. But that is a murky area.

  61. You overstate what Beatrice has done.

    This can be thought of in reference to recent discussions about having some type of “use” requirement. To highlight this, modify the fact pattern such that Alfred did file and obtain a patent on “A” only. Suppose then that “B” is patentably distinct. Do you deny a patent to Beatrice in light of the patent to Alfred? Can Beatrice even make or use without Alfred? Can you invoke this type of sui generis law apart from (and without severe damage to) 35 USC 101?

  62. Another angle to look at it from an infringement perspective: Once patented, will the patent be enforceable against a would-be infringer who only makes the coating, without the buffer? If the answer is yes, then A should be a rightful co-inventor.

  63. If there is prior art that would anticipate/render obvious the coating but not the buffer, then B should be the sole inventor. If there isn’t, then A and B are joint inventors.

    In other words, A and B are joint inventors if and only if the coating alone is patentable. If the coating alone is not patentable, but coating + buffer is, then joint inventorship.

  64. it appears that Alfred wasn’t working with Beatrice on the particular problem

    I am going to have to put a note on my Post-it (TM) notes that invention does not actually require attempting to solve a particular problem.

    Ah, the serendipity of it all.

  65. Okay, anyone besides Michael R. Thomas that has a reference to a case or a statute want to take on my question above? (If Patently-O’s comment section is only for trolls, troll away you trolly-trolls.)

  66. So who wins in a theoretical perfect ajudicating world. For maximunm human advancement and world benefit the parent conciever is correct choice especially when a multi invention genious is involved. The recent corrupt AIAs provision to eliminate patent clusters must be revolked as unconstitutional obstruction of justice.Everything that the courts and legislature can do to get the money and people behind the large scale conciever is in the best intrest of the majority. R+D previous art is acomplishable by anyone with the education but top conception abilities are born in not educatated in

  67. There is many who want to say well alfred dident consider all the possibilities when filing a so I should have the right to steal his contribution even though I am technically and monitarily at an unfair advantage and should be able to just rip albert. But Albert says I would have gotten that a+b improved combination in time myself and I should have 20 years to do it.

  68. Because without a being concieved then a+b would not exist so there would be nothing to patent. likewise without the parent the child would not exist. then there would be no benefit to human advancement the reason the patents are granted

  69. Maybe I’m missing something, but it seems to me that Alfred’s invention encompasses element α (the coating) while Beatrice’s invention encompasses elements α+β (the coating + the buffer). Because, according to the hypothetical, the patent only claims an invention that encompasses α+β, only Beatrice is the inventor.

    If I’m wrong–and I very well could be–I’d love to understand why.

  70. The question is, why doesn’t Alfred patent the pill without the coating. A buffer coating sounds like a obvious dependent claim to me.

  71. Also we need to consider the indegency of the inventor in the equasion. If he is unable to file due to lack of money to hire capable patent preperation people and filing fees and maintanance fees then the neighbor needs tripld damages assesed because he is taking advantage of the situation

  72. just not sure I would consider such an analysis an analysis of “the claim as a whole.”

    No, it’s more of a point-of-novelty analysis, but I didn’t want to rile up you-know-who.

  73. IANAE If the coating was novel at the time, the claim as a whole is a collaborative effort because two people exchanged information that was not known in the art, which led to the conception.

    So, according to your approach, determining inventorship (like determining eligibility under 101) requires in at least some instances an evaluation of recited elements separately with respect to the prior art. I understand the logic of your position … it’s not unreasonable … just not sure I would consider such an analysis an analysis of “the claim as a whole.”

  74. She conceived of that combination by herself.

    If the coating was novel at the time, the claim as a whole is a collaborative effort because two people exchanged information that was not known in the art, which led to the conception. That’s pretty much what collaborative invention is.

    On the other hand, if the buffer is known and not inventive, I would say that Beatrice is not an inventor at all unless the combination is the point of novelty. Otherwise, it feels like you’d have to name the inventor of the nail to present a dependent claim to “wherein said fastener is a nail”.

  75. LB: I don’t see how their jointly applying (or not) affects the question of whether they are joint inventors of the claim to pill + coating + buffered layer. Certainly it affects how the application is handled, but inventorship doesn’t change.

    Agreed. Absent any other facts that would indicate a collaborative endeavor, that was Beatrice’s invention. She conceived of that combination by herself.

    Inventorship case law is a complete mess, as everyone knows. The more the law (case law and statutory law) moves away from any consideration of who contributed what element to any particular claim, the better the system will be.

  76. Obviously he has stolen my intellectual property because I was the conciever. In filing his patent application he has lied by swearing an oath of inventorship and should recieve a 1000000000 doller fine and non issuance of the patent. The bait for the trap is seperate from the trap so if he files on that thats a sub invention of my trap because it attracts mice better so he gets no patent on that either until my patent on the trap expires in twenty tears and in the mean time ill have enough money from the trap sales to fund my R+D department and can meet the technical requirements of established company and get the patent on that cheese too as a child conception

  77. If the patent issues naming them as joint inventors after they jointly applied, the patent is valid and they are legally joint inventors.

    I don’t see how their jointly applying (or not) affects the question of whether they are joint inventors of the claim to pill + coating + buffered layer. Certainly it affects how the application is handled, but inventorship doesn’t change.

    Regarding your contention that Beatrice is the sole inventor of the buffered coating, I think not. She learned of the coating from Alfred.

    So what? I learn how a toilet works on howstuffworks.com and I invent an improvement. That doesn’t make howstuffworks.com a co-inventor.

    Either they are coinventors or the patent is potentially invalid under 102(f).

    I don’t think so. Beatrice has to disclose the email to the PTO. Since we’re talking about the old law, the question is whether her improvement is a patentable advance over the email under 102(f)/103. If it is, she is an inventor and is the sole inventor, provided that there was no collaboration. If it is not a patentable advance over pill + coating, she hasn’t invented anything (under 102(f)/103), unless her work and Alfred’s are owned by the same entity. Again, the question is collaboration. In my view, collaboration implies that you’re working together to solve the same problem or closely related problems. Building on the work of another is not necessarily collaboration.

  78. Let me give you an example.

    You work in a garage and invent the better mousetrap. You use cheese as bait.

    Your next door neighbor drops bye one day, sees your mousetrap, and files a patent application on it, but claims the mousetrap using a particular kind of cheese. His patent issues because the mousetrap is new, not because the particular cheese is new in that combination.

    What has your neighbor done?

  79. Michael, if the novelty at all depends on the coating, then either Alfred and Beatrice are coinventors of the combination coating + buffer, or the Beatrice sole application for the combination is invalid under 102(f).

  80. LB, note the “assumption” I made that they jointly applied. If the patent issues naming them as joint inventors after they jointly applied, the patent is valid and they are legally joint inventors.

    If they do not joint apply but separately contend to be the sole inventors — that is where the issue must be litigated and decided.

    Regarding your contention that Beatrice is the sole inventor of the buffered coating, I think not. She learned of the coating from Alfred. Either they are coinventors or the patent is potentially invalid under 102(f).

  81. Alfred and Beatrice are the inventors of claim 2.

    I think that is debatable, Ned – the question becomes whether there was “collaboration” between Alfred and Beatrice. If there was not, then Beatrice is the sole inventor. This is a pretty murky area, though.

  82. I did. I think you did a magnificent job of answering the question: “who can get a patent at all under various scenarios that are not given in the fact pattern”?

  83. LB, I think this is simple.

    Assume claim 1 is to the pill plus coating. Claim 2 adds the buffer.

    Alfred is the inventor of claim 1. Alfred and Beatrice are the inventors of claim 2.

    I assume both jointly apply for the patent.

    Not let us assume that only Alfred applies.

    Then Beatrice is not a coinventor of claim 2 if it is an obvious variation. There is actually a Supreme Court case on this point.

    Let us next assume the coating is obvious and the buffer the sole invention. I think this is a case where Beatrice should be substituted as sole inventor under 256.

    In Beatrice applied without Alfred, we have the converse with respect to claims 1 and 2.

  84. The question was who is the inventor of the combination of pill + coating + buffer layer.

    Given the fact pattern, Alfred certainly didn’t invent that by himself. Also, from what we know, it appears that Alfred wasn’t working with Beatrice on the particular problem that was solved by pill + coating + buffer layer. Yes, pill + coating and pill + coating + buffer layer could both be claimed in one patent application, but it seems to me that the inventorship of those claims is completely distinct, such that if one of those claims is dropped then the named inventors should be changed.

  85. Alfred ownes the parent pill coating patent and beatrice ownes the child subinvention buffer coating if its interconnected with the buffer such that both are needed to produce a superior product capable of generating sales against the competition. Otherwise beatrices invention is a parent conception and recieves a seperate patent.If beatrices invention is dependant on alfreds then she has to wait for alfreds patent to expire before using the combined 2 inventons or she can lisence to alfred until his 20 years patent expires then file a patent on the improved version. If there working together in a partnership then a written agreement would superseed the general rules and might net her 50%of the profits depending on who is providing funds and what they want for a cut. Of course in this case they need to pay the true conciever who never got paid me in order to be legal

  86. “should” being merely wishful thinking…

    (of course, A has only A to blame if A disclosed without filing first)

  87. There is the wrinkle too that B could make A’s invention public against A’s wishes which should not prevent A from filing.

  88. And, finally, neither if they both make it public, and Alfred if he didn’t make it public with Beatrice transaction, but Beatrice makes it public before Alfred files a patent application.

    Then Alfred could have a claim to his invention with further addition of a known buffer.

    So, could be A, A & B, B, or neither depending on whether or not they make it public before filing.

  89. Good point. If they were cooperating and filed a patent together, then they both should be on it. If Alfred made his invention public and Beatrice just happened to read it, then Beatrice could file a patent without Alfred and claim a pill with coating and buffer, but only assert that the buffer is her invention (she could still claim the coating.)

  90. Does it matter whether the two are working at the same company or even know each other. (For instance, what if Alfred send the email to Beatrice out of the blue).

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