By Jason Rantanen
When Congress passed the America Invents Act and President Obama signed it into law, courts were stripped of the power to declare patents either invalid or unenforceable for failure to disclose a best mode. While it is true that amended section 112 of Title 35 still technically "requires" patent applicants to disclose a best mode if they know of one, courts will no longer enforce the requirement. For all practical purposes, the requirement that a patent applicant disclose a best mode is effectively dead.
Yet, perhaps in moving to eliminate the best mode requirement Congress acted too hastily. In a recent online essay published by the Stanford Law Review, Lee Petherbridge and I draw attention to a benefit the best mode requirement provides (or perhaps "provided" is more accurate) that directly challenges the conventional attitude toward best mode, arguing that best mode works closely with the nonobviousness requirement to establish the level of "inventiveness" that the U.S. patent system has long considered optimal.
You can read the complete essay here: http://www.stanfordlawreview.org/online/in-memoriam-best-mode
The establishment of who concieved the invention is important to retain even when others made lienable contributions and a sale has occured because it establishes the inventors invention clusters to be used as a proof of other conceptions for dispute issues. It is also important in the invention being recognized as the acomplishment of the actual inventor for consumer recognition in boosting sales of whos chain of title to compensate for the invention. Also imprtant is to have consumers recognize when inventors have been cheated of the invention therough the new forced sign off provisions in aia
Ide beg to differ in reality once filed the patent is stolen through interoffice corruption and espionogers run back there corrupt filings in time to make it look like your not the inventor of anything new at all at least if its valuable enough like all my patents are. Also lack of money to proceed with the applications may allow thefting and stop our britest inventors from getting off the ground wile shutting the system down
Yes I would say that however in this system already the inventor is scewed against in every concievable manor already so the term sale means throw him a bone like 10000 and 1% or hire him till the projects done then layoff. Another thing the rejimes do is tell R+D persons to get a project or there fired then they stalk me and approach to steal IP by intimidations.
“Michael, no one is disputing that the inventor, the one who thought up the invention in the first place, has the initial right to a patent.”
Not to make fun of you Ned, but one very plausible reading of your series of posts on the “archaic” nature of naming inventors is very much to dispute that initial right. Several on this thread have pointed this out to you. Losing out on an exchange to Mr. Thomas will not bolster your credibility.
Michael, no one is disputing that the inventor, the one who thought up the invention in the first place, has the initial right to a patent.
But would you agree that the inventor has a right to sell his invention?
Ned without the conception of the invention you have nothing to begin with so the invention must remain the inventors property of you stall the system and human advancement falters (Destroying the incentive to create)
Michael, the inventor does not have to part with his invention except for valuable consideration.
Yes ned appears to be heading in the direction of pure rip offs and destruction of the U.S.technilodgical lead definately an ancharist the congress has done a bad enough butchering job of cival rights as it is.Hurry get them voted out of office.
What about the concept of destruction of incentive to create and theft of intellectual property. The inventor must be the primaty benefactor of the invention or the whole system is fraud witch it already is in practice
Are you in the habot of not reading what is posted?
“Plus, only inventors invent and the pundit Ar_I_§_8 laid the critical constitutional foundation for the law.
Or is it as the pundit Big Corp Makes Individual Country Laws (even US laws) an Anachronism states that you feel even the US Constitution is an anachronism?”
I make myself at least the third person now to make this point.
Please pay attention.
Uphill, I'm sorry, but I don't believe you have discussed just how inventorship is relevant to patentability. You did cite a case for the proposition that inventorship is relevant to ownership. To that proposition I have expressed agreement.
Just for me and for our dear readers, could you help us just a wee bit and provide a simple explanation of how inventorship remains relevant to patentability?
“why inventorship remains relevant to patentability”
I already did so.
I gave you law.
Isn’t that enough?
Plus, only inventors invent and the pundit Ar_I_§_8 laid the critical constitutional foundation for the law.
Or is it as the pundit Big Corp Makes Individual Country Laws (even US laws) an Anachronism states that you feel even the US Constitution is an anachronism?
I am not sure where you get off making a proclamation and expecting the world to turn on your view.
It would be nice, Uphill, to explain not only to me, but other readers here, just why inventorship remains relevant to patentability?
“Naming them seems irrelevant.”
No. No. No.
Ned, I have shown you the law on this and explained to you how that law was not changed by the America Invents Act.
We do you repeat your error?
You deciding to label everything as “anachronistic” simply does not make it so.
If, the point I am making is that inventorship seems to remain relevant only with respect to ownership. The applicant can be the owner by assignment. If the applicant is owner and not the inventors, and let us say he records his assignments, why is it necessary to further name the inventors? Naming them seems irrelevant.
CIPs? If the owner files a CIP from an application with common disclosure which he also owns, where is the problem? Really?
I think a lot of our thinking is anachronistic. We should take a hard look at streamlining our procedures along the lines of reality where the owner of the invention is the real party in interest.
Who’s paying a “lot of money” to record assignments at the USPTO? I can probably beat that price.
There is exactly one good reason for recording assignments at the PTO. It’s in the last paragraph of 35 U.S.C. s. 261.
OK, I’ll bite.
What are the two reasons why you would not pay a $35 recordation fee and about a half hour of a lawyer’s time (max) to record title with the USPTO?
Sorry if you are being sarcastic and I am not getting it.
It is just that I can see at least two reasons why one might positively decide NOT to record title, but not one good reason that would prompt one to pay a lawyer a lot of money to record that title.
“Attribution is not necessary in the patent itself.‘
I cannot find where anyone indicated otherwise.
However, several have commented on the laws that govern the practice of obtaining that patent.
Not sure exactly what point you are trying to make with your reply.
You don’t see any benefits of taking due care and dotting your i’s and crossing your t’s?
Really?
“In our new FTF system, inventorship is a non issue, so why in the world should we name the inventors even as a matter of formality? Who the inventors are is totally irrelevant from a patentability point of view.”
No. No. No.
Ned, I have shown you the law on this and explained to you how that law was not changed by the America Invents Act.
We do you repeat your error?
Thanks. I know why it is a mistake for patent owners not to record their title in Europe, but why should they give money to law firms to record their title at the USPTO? I don’t see it yet.
So, a bit like the first sentence of Article 60 of the European Patent Convention then? “The right to a European patent shall belong to the inventor or his successor in title”
Attribution is not necessary in the patent itself. Ownership must only be proved in court.
In our new FTF system, inventorship is a non issue, so why in the world should we name the inventors even as a matter of formality? Who the inventors are is totally irrelevant from a patentability point of view.
“which is why I limit the “no harm no foul” position here to the rightful owner”
A tautology here is; the end to be proven, assumed is.
If rightful owner assumed, you have; everything proper including back to and including proper attribution to the actual inventor, assumed you have.
Assignments provided to the USPTO are neither examined, required, nor dispositive.
See for example, link to uspto.gov
“ What does it mean when a document is “recorded ?”
The office simply puts the information on the public record and does not verify the validity of the information. Recordation is a ministerial function. The office neither makes a determination of the legality of the transaction nor the right of the submitting party to take the action.”
Max, in the US, the alleged patent owner has the burden of proof in court to prove ownership, otherwise he has no standing. In the PTO, the registered owner is presumed to be the owner; otherwise the owners are the inventors as tenants in common. To shift the presumption that the inventors are the owners, the new owner must have an assignment of some sort in writing.
Ned, you write:
“…he will have to prove his title by proving up an assignment”
I’m interested in that statement. Here’s why.
In Europe, prima facie the owner A displayed on the PTO Register is the rightful owner and does not need to prove it. If some other party X claims to be the true owner, and seeks to displace A from the Register, the burden of proof rests with X.
As far as I know, in issues of patent ownership in Europe, this allocation of the burden has always been so. The contrary in copyright, where there is no official Register. There the party asserting the right might be put to strict proof of ownership.
What’s the point of an official Register, if not to establish prima facie proof of title?
Agree on standing — which is why I limit the "no harm no foul" position here to the rightful owner of the invention under the law.
“If there are no legal consequences for the rightful and legal owner of the invention to name himself as the inventor, then wouldn’t you think that the naming of the inventor is a mere formality?”
As your premise has been shown to be an impossibility (corporations cannot be the named inventor), it is completely unclear what you are going on about.
Secondly, there are available actions against improper chains of title (back to and including the original inventor), not the least of which is standing, which very much retains its legal power.
Uphill battle,
If there are no legal consequences for the rightful and legal owner of the invention to name himself as the inventor, then wouldn't you think that the naming of the inventor is a mere formality?
We have the same problem with "best mode." There are no legal consequences for not disclosing the best mode. For this reason, the so-called obligation to disclose the best mode is a mere formality.
“but without even naming them”
No. I showed you the law. Why are you not getting this?
“being a mere formality”
In that sense, all law is a mere formality. Why bother with any of it?
I guess that Ned feels that the constitution is archaic (at least when it comes to his agenda). I mean, the founding fathers are not around, so who cares about the true individual inventor? Big Corp is what really matters.
“Why not lie?”
Is that what I really understand you to be proposing?
Don’t you have enough issues with your reputation as is?
I believe the question was whether the owner of the invention could apply on his own, not only without even asking the inventors their permission and being denied, but without even naming them. I think the owner could; the naming being a mere formality that could and possible should be dispensed with. However, I think we maintain the requirement due to treaty obligations.
So, what happens if the owner names himself as the inventor? Eventually, he will have to prove his title by proving up an assignment, but the mere naming of himself as the inventor will not invalidate the patent. So, in the end, why not?
OK, I will concede that we have to name inventors, not owners. But this requirement truly is an anachronism.
“The simple retort is this: Inventors can assign their rights”
No one said otherwise. How is this even germane?
Your response supra supra sucks.
“ I assume they can be assigned by operation of law if Congress were to pass a work for hire statute regarding patents.”
“I ASSume.”
Yeah, thought so.
Even simpler retort – the question is not about what you can ASSume. The question is about the current state. Further, even ASSuming an assignment by operation of law, such assignment changes none of the law about both who FIRST innurs the patent right and thus whose name goes on that patent as inventor. An assigned right does not carry with it the right to change inventorship. Ownership and inventorship are simply two different things.
Now stop trying to move those goalposts.
Simple indeed…
See my response supra.
The simple retort is this:
Inventors can assign their rights. I assume they can be assigned by operation of law if Congress were to pass a work for hire statute regarding patents.
I am not advocating that the applicant for patent not have obtained their ownership rights from the inventors. I think that, just like in court where the owner of the patent may bring suit, in the original application, the owner of the invention should be able to apply for and obtain the patent.
(“… to inventors…”)
To Ned Heller, who has trouble with the idea that the AIA got rid of 102(f) etc. and so could somehow have made it possible for corporations to be applicants for patent:
Ever hear of the supremacy clause? To the extent the AIA may be viewed to do this, why would it not be unconstitutional?
(“… to inventors…”)
Eliminating the best mode requirement will be a good thing for the incentive to create in non technical inventors. Going back to initial document disclosure program would help to.Allowing the inventor to advance a parent conception with associated subinvention is the way to end up with the patent awarded in the wrong name. Care to check for a genuine new intellectual concept is critical with a specific enough description of the unique features is key. In non indegent inventors time limits should restrict companies that cant genuinley progress the invention from yieing up the concept yearly checks should determine progress or lack of it and at 3 years independant sub inventors should have the right to become required partners or take over the project from uncoperative firms to insure progress
“ I believed I was right, and I still do, on the merits.
I don’t recall the details”
literally, laugh out loud funny Ned. Don’t know what your talking about but still feel that you must have been right?
Misleading? Not at all. The jester suit looks custom made.
“So you do admit that your post stating that I did not know the importance of the vacatur was an a bit misleading.”
No, because it was not my post for one, and for two the post was accurate. It’s astounding that you of all people question anyone’s legal knowledge given the quality of your posts, or lack thereof.
“Well, in the end, you might be right”
Can we not move the goal posts?
Might be right? I am right. I answered your post of 5:01 AM. I explained the what and the why and backed it up with legal authority.
Let’s not now move the goalposts to discuss what “only seems logical” or “who really cares who the inventors are.” Let’s leave out the perjoratives like “anachronistic.” IF Congress had wanted to change who can be named an inventor, they should have done so directly. They did not. End of story.
Well, in the end, you might be right. As I see it, the owner can now apply for the patent, make the oath, or file the assignment of the actual inventor who makes the oath, and operate almost entirely without the cooperation of the actual inventor. It seems only logical to be able to go the next step and entirely ignore the inventor in the patent application process, leaving the issue of who the inventor actually is solely to the province of proving title, a court issue.
We might have treaty obligations that require us to name the inventors, but they too might be anachronistic as more and more countries go to a work for hire regime where title in the invention vests by operation of law in the employer. Who really cares who the inventors are if the employer makes the application and no one challenges his ownership?
You have conflated things. Neither the rule nor the case law have any such dependency on the section of law you provide.
In other words, it doesn’t matter that the AIA eliminated 102(f). The portions I mention are still the same thus you still cannot have a non real person as an inventor.
I get what you want but you are not at liberty to get it if the law did not actually give it to you and as I posted the AIA did not give it to you.
Uphill, but you neglect to consider the effect of the repeal of 102(f). No longer is the named inventor required to have invented anything. That is a major change in the law that your older case could not have foreseen. The assumption that the named inventor actually to have conceived the invention, per current law, is gone.
True, the independent law of ownership of a patent has not been affected by the AIA. Your cited case is on point there. The patent owner still has the burden to prove that he derived from the inventor, and I presume that means an inventor who conceived the invention. But that is in court, not in the PTO, and the standing/ownership issue has nothing at all to do with whether the named inventor on the application be the one who conceived the claimed invention. That is no longer a consideration as was made clear by the repeal of 102(f), and the other changes made to the statute to allow assignees to file the application.
So why not simply allow the owner to name himself as the named inventor? I see nothing at all wrong with that per the new AIA.
However, I remain open to contrary argument based on the AIA. We can take our old assumptions about named inventors and politely filed them away in the file labeled "anachronisms."
Ned Heller,
“Let me remind you”
Did you not see the rule I posted? Did you not see the case law I posted? Is that not enough legal basis for you? That basis has not changed. If you think it has, you need to pony up and show it.
PURfect Freeriding,
“equally meaningless”
Don’t blame me because the AIA makes the results effectively meaningless. I am still correct as to the process and that was what the question from Ned Heller was concerned with.
You may be correct that GMC Corp. may have an effective patent with the so-called phantom inventor, but they will not have a patent with them listed as the inventor. The America Invents Act simply did not change that portion of the law. At least not as yet shown by Ned Heller. The named inventor still must be a real person. That is the law. If either of you think otherwise, show it to me. I have done my part and shown you the existing law.
Let me remind you that the PTO has no substantive authority. It must have a legal basis for the rejection or objection.
Sent from iPhone
Good question and observation. Ownership will still be a matter of who invented, so this will implicate standing in court.
However, if the corporation owns the invention at the time of the application, what legal basis is there to reject or object to the corp. being the named inventor?
Sent from iPhone
GMC Corp. or “Mr. John Smith” a distinction as equally meaningless when John Smith won’t sign an oath (because he knows he did not actually invent anything, but Big Corp Multinational can still process the application sans oath given the change in law that the AIA provides.
Uphill,
Note 37 C.F.R. § 1.46 Assigned inventions and patents:
In case the whole or a part interest in the invention or in the patent to be issued is assigned, the application must still be made or authorized to be made, and an oath or declaration signed, by the inventor or one of the persons mentioned in §§ 1.42, 1.43, or 1.47.
Specifically 1.47(b) under the AIA allows Big Corp Multinationals to process applications with NO oath from an actual inventor having to ever be made.
Thus the invitation to create “phantom” inventors.
While the formality of a “named” inventor is still present, it is a formality without any teeth. Deceptive Intent? Gone. Oath? Gone.
As to rejection or objection, the distinction is meaningless.
You will not be getting a patent for an application that names GMC Corp. as the sole inventor.
The “named” inventor is still required to be named.
37 C.F.R. § 1.41(a)
A patent is applied for in the name or names of the actual inventor or inventors.
Also see Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993).
“At the heart of any ownership analysis lies the question of who first invented the subject matter at issue, because the patent right initially vests in the inventor who may then, barring any restrictions to the contrary, transfer that right to another, and so forth.”
Are you saying that the America Invents Act changed this understanding of law? If so, please specifically point out where.
"If I recall correctly it was both, and your insistence on your position even after being informed was what alienated one of the few friends of yours on this website, "A New Light.""
So you do admit that your post stating that I did not know the importance of the vacatur was an a bit misleading.
If I recall correctly, New Light and I crossed swords on the District Court opinion. That I maintained my position had nothing to do with the Federal Circuit case as legal authority. I believed I was right, and I still do, on the merits.
I don't recall the details of the particular issue under discussion. But if you want to bring that topic up again, we can discuss it once more.
Uphill, you seem to confirm my suspicion that you cannot formulate a "rejection."
Regarding your objection, what is the legal basis for your statement that a corporation cannot be an "named" inventor, when the law does not even require, post September 16, 2012, that the "named" inventor have made the invention?
Oh Honey, hush, you are, you just have not realized it yet.
If I recall correctly it was both, and your insistence on your position even after being informed was what alienated one of the few friends of yours on this website, “A New Light.”
“The poster cannot possibly be an attorney”
LOLZ. Same exact thought that goes through my mind for 95% of Ned’s posts.
Perfect example right above.
“The poster cannot possibly be an attorney”
LOLZ. Same exact thought that goes through my mind for 95% of Ned’s posts.
“Adverse to a little education, are we?”
Ned’s style of “education” – be very afraid.
Even post 9/16/12 an application cannot name a non-natural person as sole inventor.
Your application would be objected to as to form and you would be supplied a notice of missing parts.
You want to fight that objection? Good luck.
I need a smart examiner to formulate a proper rejection post 9/16/12 for an application that names GMC Corp. as the sole inventor.
Now, this reply really takes the cake. It says it all.
The poster cannot possibly be an attorney.
The phobia about homosexuality is all in your own mind, my friend.
See my posts at May 13, 2012 at 09:01 PM and May 14, 2012 at 03:32 PM.
You alone are fighting this battle. With yourself. Is that why you are so sensitive?
Stan, on best mode, leaving it in 112 makes no sense at all. However, taking the requirement for best mode out of our laws is all to the good, in my view.
Deep, allright, 112/282.
You do not seem to understand that validity and patentability are intertwined.
Class, explain please why there are no new matter rejections user 132?
Adverse to a little education, are we?
Not “importance of,” “of.” There is a difference, and you know it.
“astounded that you would not know the difference”
Coming from the guy who was not aware of the posture or the importance of vacatur in the Tafas case, Ned, your admonishment comes across as both insincere and unbelievable.
You are off your rocker.
Because it was chosen to be covered under 37 C.F.R. § 1.53(b).
That was a mere choice that does not support what you think it supports.
You are really losing it. Time to hang up and retire. Go golfing. Go fishing. Go do anything else but post on law.
“the legal basis for the 112 rejection is in 282”
That would be not correct.
The legal basis for the 112 rejection is…
…112.
112 still has the legal authority of itself.
Ned, one of your wackiest (and that’s saying a lot)!
No, Utoo, I read the statutes, the legislative history, the Supreme Court cases interpreting them, from 1790 onwards. You obviously learn your patent law from the foot of certain Federal Circuit judges who seems to think patent law began in 1952, and cases prior to the formation of the Federal Circuit are to largely be ignore.
What a sad little man you are that you have to spew this kind of hateful venom on the internets. Plus, your grammar sucks.
metoo, I am astounded that you would not know the difference between law and procedure. A rejection is grounded on statute. A claim can be rejected only if it would be invalid.
Check, e.g., Section 132. There new matter is prohibited. But the examiner has no authority to reject claims under 132. Why?
Once you figure that out, come back to class.
metoo, but you ignore that the legal basis for the 112 rejection is in 282. That section is the one making a violation of 112 a condition for patentablilty. Otherwise it is not, as opposed to both 102 and 103, that contain expressed conditions for patentablity.
In the future, the examiner has no legal authority for rejecting a claim on best mode grounds.