By Dennis Crouch
I am happy to introduce Professor David Hricik as a new Patently-O contributor. Hricik is likely the most well-known and well-respected expert on U.S. patent lawyer ethics and so it makes sense that his focus on Patently-O will also be on patent law ethics, patent lawyer malpractice, and inequitable conduct. His two-volume treatise on patent ethics (co-authored with Mercedes Meyer) is published by Oxford University Press and has become a required reference for patent attorneys dealing with our regularly arising ethical questions. Hricik has been working in patent law for almost 25 years: The first 14 as a (patent) litigator and the last ten as a law professor.
Hricik will be blogging at: www.patentlyo.com/hricik. We’ve added a new tab at the top of the page that links to Hricik’s site.
His first three posts are up, including Best Mode, the AIA, and Conflicts of Interest.
Welcome David Hricik.
Mr. Occam, the King of Spain, as sovereign owner of the land in the Empire, granted land patents in California. I hold land in California. I trace my title to the Spanish patent granted by the King.
Can someone, I ask, challenge my title by showing the King of Spain was an impostor? No. That would be ridiculous. But that is essentially what you say you have a right to do with the title to invention patents.
Title in the application and patent is regulated by statute. It absolutely matters not who invented what or when. That goes to validity.
Again, who owns, by statute, the patent application. That question is answered by statute. What is the answer?
Furthermore, do you refute that the sole means for a third party to challenge inventorship of a patent under the AIA is through derivation proceedings under 135 or 291; and that those proceeding have an hard and fast 1-year SOL? If the inventorship is found to be defective, what pray-tell is the statutory remedy?
Invalidity!
Occam, all you have done in reply to me is say I am wrong. It is your who fail to engage.
One more time,
Who owns an application patent? Hint, it has something to do with the applicant.
A foolish and misbegotten question Ned that in no way advances the discussion.
The point is not whether there is legal title. The point is whether or not title can be challenged.
Once again, you are making this more difficult than need be.
Ned,
Time for you to stop taking and to start giving (and I do not mean giving your same little canned speach. I mean giving substantive replies to the points made).
You have asked too many questions and have not addressed near enough points.
No more questions from you. Answers from you. Addressing the points raised from you.
And remember, Keep It Simple S_tup[id.
Mr. Occam, it is your position then that the named inventor (or those in privity with the named inventor) does not have legal title to the patent?
Mr. Occam, address the law.
1) Who owns a patent application?
“The new statute fairly limits third-party challenges to inventorship to derivation proceedings under 135 or 291. Both require an the challenger to have a patent or a patent application”
Re look at this and you will see that you have confused the scope of these laws as controlling the larger picture of when standign can be challenged (for exampled, by those who are not in a derivation contest.)
Your error is so plainly evident and riddled throughout your posts that all of you posts fall apart.
You are stuck in a “dreivation battle” and neglet the larger picture that those not involved in derivation battles can still challenge standing.
“no one is even suggesting that a defendant cannot challenge standing”
You really are confused and spun around as your instatn statement is not true. In fact, you are suggesting that very thing. Repeatedly.
“The question of whether the named inventor is the actual inventor is quite beside the point”
On the contrary, that is the point.You keep on saying “you can’t” but you offer no support for this. Standing is indeed a larger issue and is open to all types of challenges, and yes even a challegne that the true inventor is not the named inventor.
There is a rebutable presumption to your notion of what the title shows when it is shown by the Patent Owner. Rebuttable. And that means challangeable.
“But the issue is limited to whether the plaintiff is a named inventor” – BALDERDASH. You have zero ground to make this claim.
To say that no one else, no one may make a challenge to invetorship is simply speaking out of your @ss. The statute you lean to is a statute of limited scope, and is for the derivation process. Those falling outside of the derivation process can very much still challange standing. You have cabinned your self in to the derivations section and have lost all sight of the bigger picture. You have articually limited ALL challenges to be chalalnges based on deriviation when that is just not the fact pattern under discussion.
You seem to have bet the bank that this can’t happen and I don’t see why you would do so and why you think this is some sort of involate sacred ground. You say “By statute” but you are misapplying that statute by not understanding the context of what is governed by that statute (only derivation proceedings).
It is actually quite comical.
Above all of this, you have laid down only your words and feelings and nary a citation to support any of your wild conjectures. The sections you do quote are of limited scope and purpose, and quite simply do not deal with general court action outside of those tiny realms.
You say too much with too little support.
Anon, being rock steady and being right are not the same thing.
Your thesis, that inventorship can be challenged during standing. Your authority: Stanford v. Roche.
That has been your consistent position.
I suggest that you are wrong, primarily because the named inventor of the application owns title by statute. Stanford v. Roche was a battle between two assignees from the named inventor.
The new statute fairly limits third-party challenges to inventorship to derivation proceedings under 135 or 291. Both require an the challenger to have a patent or a patent application. Both limit the period of filing to 1 year from the publication of the claim or issuance of the patent. I can hardly see this one year limitations period be so easily avoided by raising the same issue during a standing challenge.
…
Mr. Occam, no one is even suggesting that a defendant cannot challenge standing. However, the law provides that the named inventor of a patent application is the title owner. That he might assign is granted. Whether the patent owner is the named inventor or whether he has received title from the named inventor is all that the plaintiff has to show to show standing. The defendant may challenge the proof, but he may not challenge whether the named inventor is an inventor.
The question of whether the named inventor is the actual inventor is quite beside the point. The new statute provides two mechanisms by which a third-party may challenge inventorship: sections 135 and 291. Both have one year statutory limitations. No one else, no one, may make a challenge to inventorship. By statute.
So do not suggest that I am saying that one may not challenge standing. One can. But the issue is limited to whether the plaintiff is a named inventor, or all of the named inventors, or whether the plaintiff has received title by assignment from the named inventor(s). It simply is not permitted under the statute to question the inventorship of the named inventor as a challenge to standing.
Really?
“I read his e-mails” and “I think anon is so far off the beaten path of reasonableness that it is laughable that he has any defenders at all. I am indulging him out of kindness.”
Ned, I find your kindness disingenuous and your reading skills pathetic.
You repeatedly do not see or comment on the points I make that are critical to the conversation, you mix up threads and conversations of threads, You take things out of context when the context is clear, you insist on adding unnecessary complicating and conflating facts not a part of our original discussion points, and you refuse to listen to reason.
If anyone appears to disagree with you, you label them as “not understanding the issues”. Why is it that you and you alone “understand the issues” and yet insist on getting things wrong, kicking up dust, changing fact patterns and not addressing the points I make? Why is it that you accuse me of shifting positions when I clearly have been rock steady and it is you that shift by the everflowing injection of obfuscations and different “examples?” I am right here where I have been throughout. You have been all over the map and working hard to not accept the simple and straight forward answers I have provided.
I do not need your indulgence.
I need you to partake in the conversation like a professional. If you cannot act like a professional, then I suggest that you simply stop posting on this subject. You have said your mantra (over and over again) and no matter what I say, it appears that you are incapable of absorbing that information, of contemplating that information, of integrating that information. You would have the America Invents Act overwrite basic law of standing – and of the ability to challenge standing. You have the audacity to say that I don’t understand the issues as you proceeed to mangle and butcher them beyond recognition. I have been more than reasonable with you, more than patient with you. You respond to my civility with false accusations and slander. You respond to anyone disagreeing with you with a lack of professionalism that is much too much abundant on Patently-O. If you don’t want a professional discussion, please label your posts as such (something to the effect of “Ned’s View – Not Open For Discussion”). You obviously do not read my posts, or if you read them, you only read them to see where I have disagreed with you so that you can repeat your position again. You show no signs of being capable of independent thought or contemplation.
That is my last word on this subject for this thread.
Feel free to actually address any of the many points I have made (without parroting your mantra) – or not.
“The new statutory framework makes clear that people who want to pursue challenges to inventorship must do so in derivation proceedings and do so within one year of a publication.”
Respectively, you are misreading the law.
The AIA cannot be read as you are attempting to read it. The section you are reading is for those cases that have derivation issues. Someone later challenging standing in a court case (an accused infringer for example), cannot be denied their right to challenge standing.
Your reading of the law is tortured and leads to an unacceptable and unreasonable situation.
Rather than this ridiculous and untenable position, the simpler and more reasonable view is that you are simply wrong. It is quite easy to see that you are confusing the scope of law (those involved in derivation proceedings) as a condition precedent for a more global legal right (ability to challenge standing).
Mr. Standing, when we talk about pirate we talk of one who derives the invention from the true inventor. The new statutory framework makes clear that people who want to pursue challenges to inventorship must do so in derivation proceedings and do so within one year of a publication. In order to make the challenge, the rival inventor has to himself have a patent or patent application. If one himself does not have such a "interfering" patent application, the statutory framework seems to suggest, strongly, that inventorship cannot be challenged. See the new provisions for example regarding inventorship in section 256, whereby changes to the named inventor can be made but in no case is the patent deemed invalid.
If anyone can challenge inventorship at any time through standing, it would violate the express command that such challenges to inventorship be made within one year of publication. Congress could not have intended therefore to allow challenges to inventorship through challenges to standing.
Under the statutes, the named inventor has title to the patent or patent application. By statute. He does not have to prove that he invented the invention. He does not have to prove that he conceived or reduced-to-practice, or did anything else. The named inventor owns the application/patent by statute.
Henceforth, challenges to inventorship appear to be the exclusive province of derivation proceedings.
Ned listens to one person and one person only.
Anything else is “true” if it matches his agenda and “far off the beaten path of reasonableness” if it does not match his agenda. He is a puppet that has to follow his narrow script.
“I read his e-mails and ignore what I don’t like”
Corrected.
“inventorship cannot be raised in a challenge to standing”
I don’t mean to intrude or sound flippant, but why not?
I don’t think there will be case law on point because prior to the AIA, as the result would be one sounding in validity, and standing would not be reached by the court.
But that does not mean that standing is unaffected.
And it certainly does not control as inventorship is removed from a validity challenge.
AIA does not in fact say that you cannot challenge inventorship, and if one can challenge inventorship, what is to stop a challenge to standing?
I see no reason why if inventorship is an issue (that is, if a pirate may be involved) that that issue cannot be raised as a challenge to standing. Is there a legal precedent for limiting challenges to standing? I just don’t see the defense for validity overcoming other defenses that may be available at law. That’s not how I read the law.
I agree with those saying standing is separate from validity and pirates can be challenged based on standing.
Mr. Occam, and apparently you do not understand the issue being discussed.
Mr. Occam, inventorship cannot be raised in a challenge to standing. That is a defense to validity by statute and must be proved by clear and convincing evidence.
He evidently understands the basics much more clearly and readily than you. It did not take him a long, convoluted and circular route to finally arrive at:
“effectively he is non suited for lack of standing”
You are making far too much noise on something far more simple than you “understand.”
Only if he does not have an assignment from the newly named inventor. However, the issue of inventorship of the named inventors is raised in defense of validity and must be proved by clear and convincing evidence. For standing, all one has to prove is that the plaintiff is the named inventor or has received title from the named inventor. That is the law.
Ned,
You act as if a party cannot challenge standing.
THAT is ridiculous. Truly.
Simply.
I read his e-mails.
Mr. Occam, but the issue is raised in court as a defense to validity and must be proved by clear and convincing evidence.
MY POINT is that inventorship cannot be raised in defense of standing. Standing is something that has to be proved by the PO. All he has to show it that he is the named inventor, or received from the named inventor. He does not have to show that he additionally conceived or reduced to practice. That is ridiculous. Truly.
Mr. Occam, you have got to be kidding. Anon does not even begin to understand the basics of this discussion.
““effectively he is non suited for lack of standing.”
Thank you for agreeing with Anon.
You don’t need to be so complicated though.”
+1
Anon, we will agree that the PO is a pirate or received assignment from a prirate. Still this is a fact that must be proved in court by someone, by the PO or by the defendant. We both agree that inventorship is a defense to validity. But, is it a required element of proof by the PO. Does he have to prove more than that he is a named inventor, but that he conceived and reduced to practice as well?
I think not.
anon, If inventorship could be raising in defense of standing, or a requirement of proving standing, it would be used today as a defense or a required proof, but it is not. A defense of inventorship requires clear and convincing evidence. Standing requires the PO to prove his title. You are flipping the burdens of proof more than 100%.
There is NOTHING in the new statute that suggests that the law of standing has changed. It and has remained the same.
Title.
What does the PO have to show:
1. That he is the named inventor(s) on the patent; or
2. That he has received an assignment of the invention and patent application from the NAMED inventor(s).
He certainly does not have to show that the named inventors invented. Stanford v. Roche is not inconsistent as the both parties were battling over assignments from the NAMED inventor.
If inventorship could be raised in defense of standing or was a required element of proof, there would be or should be at least one case on point somewhere. Such a case does not exist. If you disagree, cite one.
He did make the point. And quite simply too (in fact in the direct opposite of your rather tortured path in finally arriving at what Anon said all along).
In fact, Anon made several valid points, including evidently your lack of actually reading what Anon has been posting.
Your post of 1:50 PM says something quite simply different.
It is Anon that has been kind by putting up with your nonsense and complications.
He just cut straight through all the BS you attempted to add.
You really should have just agreed with him straight off instead of taking such a circular path to finally do so.
“effectively he is non suited for lack of standing.”
Thank you for agreeing with Anon.
You don’t need to be so complicated though.
Mr. anon, I would suggest at this point that we circle back to the origin of our discussion, that inventorship could be raised in standing disputes.
That is where we started. We did not start with any assumption that fact of piracy was publicly known. It has to be proved, I submit, by the defendant who is challenging standing.
But, again, it is my position that inventorship is not a standing issue.
Simple concept that anon advanced?!!!!!! That inventorship can be raised in a standing dispute?
Note, the PO must prove standing. If he had to prove inventorship, that would place the onus on him to prove that he invented or obtained an assignment from an inventor. But, as every freaking one of us knows, inventorship is DEFENSE to validity that requires clear and convincing evidence.
I think anon is so far off the beaten path of reasonableness that it is laughable that he has any defenders at all. I am indulging him out of kindness.
Mr. Making, the holding title in trust is an equitable concept. If one steals tangible property from another, there generally are legal remedies, such as replevin, to restore possession. But if one is dealing in intangibles, the legal title must be assigned in some fashion.
I think the courts would order the pirate to transfer title to the true inventor. I think this, because it seems reasonable and fair, especially because if the court orders that the true inventor be named as inventor, that would effectively place ownership of the patent in the newly named inventor by statute.
The new statute does in fact authorize just such a fix in naming inventors. Thus, if the inventorship changes, and if the patent owner does not have an assignment from the new inventor, effectively he is non suited for lack of standing.
Anon,.
""I don't see any other answer, do you?"Yes.
If you have a point, simply make it, OK?
So?
Do not lose focus of the facts that were also originally present (please do not attempt to prevaricate on what the original discussion was about).
Ned,
Your email reading habits really hinder your ability to participate. Please visit the blog and read my comments in context. Doing so will readily show you the proper context I. Which I use the word “presumption.”
Patents are not presumed to be valid by statute? Is that your point? If not, what is it?
Anon, I might also add that the original issue was how one could raise the inventorship issue in court in the absence of 102(f). You proposed standing. I demurred.
Ned,
Herein lies the crux of your problem.
You refuse to listen, to think and to expand your understanding.
Under the old system this indeed was handled as a validity issue. No longer.
At this point the little scorn that falls and hits you in the head sends out shrieks of “the sky is falling.”
Calm down. Hush that noise. Shed the unnecessary complications. Center yourself. Listen.
Take a moment and THINK about what chain of title means in a court proceeding and how that chain of title affects standing, which is a concept apart from validity (you really need to quiet that part of your brain that clamors there). Think about the Stanford v Roche decision and how the Supreme Court emphasized that the chain begins with the true inventor. A pirate has no privity to that chain. A pirate has made a false claim. The fact (as stipulated) that he is a pirate, means that the claim to the chain is broken.
Your declaratory and conclusory statement of “This is not a defense against standing, but a defense against validity” is false.
It’s as simple as that. I have already told you this. You are refusing to listen.
In our initial set-up the pirate does not own anything and he does not employ the true inventor. He is a pirate, not an employer. Learn to crawl first.
Per Black’s Law Dictionary
Standing: A party’s right to make a legal claim or seek judicial enforcement of a duty or right.
To have standing in federal court, a plaintiff must show
1) That the challenged conduct has caused the plaintiff actual injury, and
2) That the interest sought to be protected is within the zone of interests meant to be regulated by the statutory or constitutional guarantee in question.
Please explain how a pirate has standing. What is the pirate’s actual injury? What is the pirate’s interest? The pirate has no actual legal injury as the pirate has no true interest. Pirates do not get to fight battles “in trust” for true inventors.
“ May I remind you that our fact pattern in this discussion concerns an entity known to NOT be a true inventor.”
Lol.
May I remind you that those who do not read are no better than those who cannot read?
The clueless remain clueless with a statement of:
“Had the named inventor been a pirate, albeit from Stanford’s inventor, Roche may still have won. Roche would have been entitled to show that the named inventor was not the inventor, but the true inventor assigned to them prior to Stanford receiving an assignment from the true inventor. Then they would argue that Stanford held legal title in trust for the true inventor, who had assigned to Roche. In such a case, Roche would win because they were equitable owners.”
Had Roche only been “equitable owners” they would have lost the case because timing of the rights transfer would have been as Stanford argued and Stanford would have won.
Newsflash: Stanford lost.
Newsflash: The Supreme Court affirmed the lower court HOLDING: as a matter of law… Roche… deprives Stanford of standing. Law. Not “as a matter of equity.”
“Roche would have been entitled to show that the named inventor was not the inventor”
You mean, show that the named inventor was a pirate…? Isn’t the clueless arguing against this position with Anon?
“legal title in trust”
I second Making Things Up request. Such “in trusts” do not spring up sua sponte.
“the patent owner is a pirate or the assignee of a pirate is assumed.”
No.
This was a stipulated fact and I made it clear that this was a cornerstone of our discussion very early on.
I pointed this out to you numerous times when I beseached you to actually read my posts.
You were too gung ho to bother reading the posts, instead wanting to complicate things well beyond the point of that initial setting.
There is no shifting of my position.
Next time, please be prepared to actually read what the other person is saying if you desire to engage in a conversation.
I repeat for your benefit my post from three days ago (July 27) that you evidently did not bother to read:
“If you want to discuss a different fact pattern (one in which you want to accuse the applicant of being a pirate, or one with multiple appllicants, each with the respective applicants still owning their applications), we could do that, but first let’s get your head wrapped around this first fact pattern.”
anon, that WE know that the patent owner is a pirate or the assignee of a pirate is assumed. The issue arose when you asserted that one could raise inventorship an lack of standing defense by an accused infringer in court. As you may well understand, no one file suit and tells the other side that they are pirate. That is something that they do not admit, I promise you.
To the extent that you now shift your position, it becomes essentially ludicrous because it assumes that we and the defendant (and for all practical purposes, the entire world) both know that the plaintiff is a pirate. Trust me, that will never happen.
“By statute, each has good title to the respective applications.”
Nice. Each has good title to inchoate rights for which only one set of actual rights will mature.
What exactly is the point that you are trying to make with this convoluted example? Other than proving Anon correct that you are just trying to obfuscate the rather simple concept that Anon advanced?
“at any time, the proper inventor can be named”
Great. Name the proper inventor. But guess what happens to the now de-named improper inventor? (that’s right, he is cut out of the title and has no proper standing to enforce, at least in the original fact pattern presented by Anon).
Must you make your statement of “You are right Anon” so complicated?
“That patent application is presumably owned by the first inventor, the pirate holding legal title, but in trust for the first inventor.”
Citation please.
Does the pirate then enforce that patent “in trust” of the true inventor? Does he tell the Judge (and the accused infringer) when standing is questioned that the true inventor wants him (the pirate) to do as he (the pirate) is doing, basically telling the court (and the accused infringer) “Trust me” ?
If in fact as you now suppose, that “the most likely answer would be that the true inventor will intervene and take ownership of the patent,” isn’t Anon’s point that the pirate will not profit then in fact correct?
Why didn’t you just agree with Anon in the first place?
“ I think the case law is clear that the ownership is in the employer, such that the employee/inventor holds title to his own patent in trust for the employer.”
Citation please.
“I don’t see any other answer, do you?”
Yes.
Let me know when you are willing to listen.
“that this presumption is known to be so”
should read:
“that this presumption is known NOT to be so”
Ned,
I have tried to tell you but you refuse to listen.
“The named inventor is presumed to be the true inventor.”
Our fact pattern, the one I try to drag you back to so that you can learn to crawl, is that this presumption is known to be so. Our fact pattern is that it is known that a pirate, someone NOT to be the true inventor is seeking a place in court.
As I first said July 26 at 7:42 PM, you are making this more complicated than necessary.
I have explained patiently that your error is in your very first assumption, but you pay my posts no heed and ramble on blithely and devise all sorts of complicated scenarios tha thave nothing to do with the original point.
I try to tell you “Whoa, hold on” but you refuse to listen.
How is this a conversation when you refuse to listen?
Anon, Stanford v. Roche was a case about assignments from the named inventor. The defendant, Roche, in that case won because they co-owned the patent. Roche had an assignment of the invention from the named inventor prior in time to Stanford's assignment of the same invention. This at least gave them coownership.
Had the named inventor not had anything to do with Roche, Roche would not have won the case. For example, had Roche independently invented the same invention, they would not have won. Had the named inventor not assigned to Roche at all, they to would have lost the standing issue.
Had the named inventor been a pirate, albeit from Stanford's inventor, Roche may still have won. Roche would have been entitled to show that the named inventor was not the inventor, but the true inventor assigned to them prior to Stanford receiving an assignment from the true inventor. Then they would argue that Stanford held legal title in trust for the true inventor, who had assigned to Roche. In such a case, Roche would win because they were equitable owners.
Regardless, the result in this case was that the defendant, Roche, was either the owner or the co-owner of the invention of the named inventor. This is why Stanford lost standing. In contrast, had Roche no interest in the invention, how could they prevail on standing by showing that Stanford had an assignment from a pirate? Stanford can show that they have an assignment from the named inventor. The named inventor is presumed to be the true inventor. Furthermore, as we discussed, Stanford may still show ownership of the invention regardless that the true inventor is not named by virtue of an assignment from the true inventor by virtue of an employment contract.
Ned,
You have made errors in each of the examples (sometimes in following your own facts, sometimes in law and sometimes in both).
However, I will hold my comments in abeyance until you return and address the original fact pattern, and my comments relating to that original fact pattern.
Please read Stanford v Roch, noting the careful use of inventor versus applicant. Please read my comments (and do not ignore what I say).
Get past crawling before you attempt to fly.
Example 4
4) an inventor works for a boss of Big Red, but this time there is no present-assignment-of-future-inventions clause. He has, however, and obligation to assign. Both the inventor and the boss file patent applications on the very same day naming themselves as inventors. The boss assigns the patent application to Big Red. The inventor quits and goes to work for another corporation, call it Big Blue. He records an assignment of his patent application to Big Blue. Both Big Red and Big Blue are BFP's under the recording statute.
Who owns the invention?
Who owns the boss's application?
Who owns the inventors application?
anon, Example 4- This employs the mirror concepts in contract law as the issues of example 2. It is unclear what you mean by “both [ ] BFP’s under the recording statute.”
Anon, the point of this example is to raise the recording statute and how it affects the answer. Both Big Red and Big Blue hold assignments of patent applications from the named inventors, and have recorded them. By statute, each has good title to the respective applications. By statute. I don't understand how one can challenge the ownership of the two corporations based upon piracy of the invention of one inventor from another. The question comes down to whether the named inventor invented, which is a question the validity today but tomorrow not because, at any time, the proper inventor can be named. So the patent is not invalid simply because one did not name the proper inventor. So what we have? We have it appears to completely valid patents on the same invention. I don't see any other answer, do you?
Example 3:
3) same as 1, first and second inventors of the same invention; however, a pirate of the first inventor files first and the second inventor files second. The first inventor does not file at all.
Who owns the invention?
Who owns the pirate's patent application?
Being a second inventor, can the second inventor still claim to be the owner of the first inventor's patent or patent application?
Anon: Example 3 – Same unnecessary complications as example 1, except we have a pirate now. My points are more direct and straightforward. Engage me on our initial discussion first.
Anon, I see that you agree that just because two different people invented the same invention it does not necessarily mean that one of the two derived from the other and therefore is a pirate. In truth, this is the same example as example 1, with the further facts as I described here, where both independent inventions are filed us patent applications.
But the most critical point I'm trying to make here is this: even if the second inventor successfully proves that the pirate did not invent, the second inventor does not necessarily own the first inventor's patent application. That patent application is presumably owned by the first inventor, the pirate holding legal title, but in trust for the first inventor. The second inventor, having filed second, loses. The pirate gets the patent, but he holds title in trust. If and when he file suit, the most likely answer would be that the true inventor will intervene and take ownership of the patent.
Under the new law, as opposed to the current law, the patent is not even invalid even if it's proved that the patent was filed by a pirate. The new law allows the naming of the proper inventor at any time. Thus the court would order that the proper and true inventor be named in any lawsuit based upon the pirate's patent, and the true inventor would benefit because the court will also order the patent ownership be transferred to him.
Example 2
"2) a first inventor invents having an employment agreement containing a present-assignment-of-future-inventions clause.
Who owns the invention?
If they both file patent applications, who owns respective the patent applications?
Vary from the above that the employer names himself as the inventor. Who owns the respective patent applications?"
Anon: Example 2 – also deals with inchoate rights, but adds unnecessary complications of concepts of contract law and improper naming of inventor (the improper naming is close, as the employer “might” be considered by some as a pirate for naming himself as inventor when he is not).
Anon, in this example we are going to considered the Film TEC case to be valid statement of the law.
At the time of filing of the patent applications by the employer and by the true inventor, the invention is owned by the employer. Both name the true inventor as an inventor. I would presume that you would agree that the employer has good standing and his patent application is otherwise valid. But what about the employee's patent? I think the case law is clear that the ownership is in the employer, such that the employee/inventor holds title to his own patent in trust for the employer.
Now we add a simple change in fact. The patent application names the employer as the inventor. How does this affect standing? I don't think it does, even though the named inventor did not invent the invention. The named inventor actually owns the invention at the time of filing. So where is the problem?
Imagine you are a judge and the defendant in court raises the issue that the named inventor do not invent albeit the named inventor owned the invention at the time of filing of the patent application. This is not a defense against standing, but a defense against validity. You to judge should summarily hold that the plaintiff/patent owner/employer-assignee does in fact have good standing, and suggest that the motion should be directed to validity.
Anon, thanks for the response.
Let's break it down example by example.
Example 1.
1) a first inventor invents, a second inventor invents the same invention.
Who owns the invention?
Anon: If they both file patent applications, who owns the respective patent applications?
Example 1 – deals with multiple inventors and inchoate rights and such is not germane to our immediate discussion.
Actually, anon, I think it is highly germane because it points out that two independent inventors may independently invent the same invention. Thus, if there are two patent applications disclosing and claiming the same invention, it does not necessarily mean that named inventors of one of them pirated the invention from the other. This is a critical notion. By extension, if it is shown that somebody else invented the invention but did not file the patent application, it does not prove that the named inventor was a pirate. He could have been a second inventor. In fact I would suggest that the law would and does presume that the applicant is a legitimate inventor. We have a statute, for example, that states that patents are presumed to be valid. If you alleged that the named inventor is not an inventor, today you have to prove that fact by clear and convincing evidence. There is a presumption that the named inventor is in fact an inventor.
Standing is something that has to be proved by the plaintiff. Not being inventor is a defense to validity that has to be proved by clear and convincing evidence. Standing is normally proved by showing that the patent owner is the named inventor or in privity with the named inventor. That is all the patent owner has to do. Whether or not the named inventor actually invented is not a defense to standing, but a defense to validity.
Mr. Wrong, you seem to be totally unaware that noone but an named inventor can be the applicant.
Now, please tell us what you believe about the following (copy it into a Word document, answer, and paste your answer back into you reply):
1) a first inventor invents, a second inventor invents the same invention.
Who owns the invention?
If they both file patent applications, who owns the respective patent applications?
2) a first inventor invents having an employment agreement containing a present-assignment-of-future-inventions clause.
Who owns the invention?
If they both file patent applications, who owns respective the patent applications?
Vary from the above that the employer names himself as the inventor. Who owns the respective patent applications?
3) same as 1, first and second inventors of the same invention; however, a pirate of the first inventor files first and the second inventor files second. The first inventor does not file at all.
Who owns the invention?
Who owns the pirate's patent application?
Being a second inventor, can the second inventor still claim to be the owner of the first inventor's patent or patent application?
4) an inventor works for a boss of Big Red, but this time there is no present-assignment-of-future-inventions clause. He has, however, and obligation to assign. Both the inventor and the boss file patent applications on the very same day naming themselves as inventors. The boss assigns the patent application to Big Red. The inventor quits and goes to work for another corporation, call it Big Blue. He records an assignment of his patent application to Big Blue. Both Big Red and Big Blue are BFP's under the recording statute.
Who owns the invention?
Who owns the boss's application?
Who owns the inventors application?
From Jul 27, 2012 at 02:40 PM:
“If you want to discuss a different fact pattern (one in which you want to accuse the applicant of being a pirate, or one with multiple appllicants, each with the respective applicants still owning their applications), we could do that, but first let’s get your head wrapped around this first fact pattern.”
Ned would rather blindly fly into walls then read any posts.
That’s downright unprofessional of MM.
Worth repeating:
as a matter of law (as opposed to equity)
deprive Stanford of standing (there’s that standing issue popping up again)
dismiss Stanford’s action (whoops, there goes the enforcement)
It’s sort of like Stanford was a pirate in trying to enforce a valid patent…
Ned,
Further to my post of yesterday at 10:09 AM, I comment that the examples you lay out are not bad examples and are worth a healthy discussion but you are trying to fly when you have not yet mastered crawling.
Learn to crawl first, then walk, then run. When you reach that point then we can discuss your attempts to fly.
At the crawling stage, you have a critical dysfunction that you need to recognize and acknowledge: inventor is not necessarily the same as named inventor or applicant.
The critical point that you continue to gloss over is that if the chain is broken at any link, standing is threatened. That break can include the first step from actual inventor for which the inchoate right inures to a Pirate who attempts to advance an inchoate right that does not belong to him. It is quite a simple concept to understand. A Pirate, known not to be the true inventor per our fact pattern, cannot have standing because the inchoate right never properly rests with him. There is no doubt that there is an inventor and that that inventor’s inchoate right is advanced to being a patent with full patent rights. But our fact pattern is simple and direct: a Pirate, known not to be the true inventor is trying to enforce patent rights for which it is shown that he is not in the proper chain of title.
I have pointed this out several times now, and each time you choose to ignore what I am saying (and even ignore the Surpeme Court case that discusses this) rather than engage at the proper starting point.
I have cautioned you that you are making things unnecessarily complicated, and I posit that you are doing so in order to obfuscate what is a simple matter at its basic logic, at the crawling stage you refuse to acknowledge.
I treat your calls as to my avoidance as “obvious” as a ruse, a ploy, mere subterfuge in your attempt not to address the points I have already put forth, to not engage the conversation where it lies, but to take it into the briar patch of complications and additional concepts.
I refute such games.
For now, I merely comment briefly so as not to indulge your obfuscations:
Example 1 – deals with multiple inventors and inchoate rights and such is not germane to our immediate discussion.
Example 2 – also deals with inchoate rights, but adds unnecessary complications of concepts of contract law and improper naming of inventor (the improper naming is close, as the employer “might” be considered by some as a pirate for naming himself as inventor when he is not).
Example 3 – Same unnecessary complications as example 1, except we have a pirate now. My points are more direct and straightforward. Engage me on our initial discussion first.
Example 4- This employs the mirror concepts in contract law as the issues of example 2. It is unclear what you mean by “both [ ] BFP’s under the recording statute.”
Because somebody (ahem, Ned Heller) needs to be reminded of what happened in the Stanford case, the Supreme Court affirmed the lower court decision of:
“However, because the district court incorrectly declined to consider Roche’s affirmative defense based on ownership, and because we conclude as a matter of law that Roche possesses an ownership interest in the patents-in-suit that deprives Stanford of standing, we vacate the district court’s judgment of invalidity and remand with instructions to dismiss Stanford’s action.”
Bold off
Yes, Ned, the applicant was Stanford. WOuld you be more comfortable if I said “applicant” to avoid the pedantic fallback you are egnaging in?
This is not a “basic patent law” item. This is a factual real world as opposed to semantic item.
I see you are getting caught in rookie semantics that the original inventor is considered the applicant and that the Office forms list the inventor as applicant.
Such a rookie mistake, placing form over substance.
From Stanford v Roche, page 3 (emphais added):
“Over the next few years, Stanford obtained written assignments of rights from the Stanford employees in-volved in refinement of the technique, including Holodniy, and filed several patent applications related to the procedure. Stanford secured three patents to the HIV measurement process.”
The facts that you are blithely unaware of include: In its’ brief on the merits, Stanford argues that title to the invention never vested in Holodniy at all. How can Stanford argue that the inventor was always out of the loop and yet was the “applicant?”
Also, I don’t know how you practice, but a law firm representing a client such as Stanford is not representing the individual that may be working for Stanford (as an individual). You glossing over this basic fact in a desparate attempt to (unsuccessfully) bolster your argument does you more harm than good.
Regardless of that, the plain fact is that Stanford lost, and as I posted, with Stanford’s loss, your argument too loses.
The point made by Anon on the simple premise of facts that the Pirate is not the inventor clearly means that the chain from inventor to applicant is also broken for any claim to right to appear in court by the Pirate. Given that the Pirate is admittedly not the inventor, what right does the Pirate have to be in court? How do you trace the known non-inventor to an uncompromised title chain? You have never addressed this point and until you do, anything you have to say is quite meaningless.
If that chain is broken, then even the (semanticly) written applicant of record (the inventor) cannot be the known non-inventor Pirate. Under old law the fallout of this was the nullification of the otherwise true invention and resulting patent. The AIA merely changed the penalty and allowed the otherwise true invention as patent to remain a valid patent.
I do not understand your blindness and refusal to separate a question of standing from the validity/invalidity of the invention turned patent.
The applicant was Stanford?
Until you learn basic patent law, stop talking.
Ned haughtily repeats his error:
“OK, then. Listen up. Title goes to the applicant. Stanford was about who was in privity with the applicant.”
WRONG.
Title goes to the inventor. In the Stanford case the applicant was Stanford. Maybe you did not notice this little fact, but Stanford LOST.
For the same rationale that Stanford lost, Anon wins. You have the facts WRONG. You have the law WRONG.
It’s as if you are purposefully trying to be as dense as possible Ned.
OK, then. Listen up. Title goes to the applicant. Stanford was about who was in privity with the applicant.
“Anon, then why don’t you answer the questions I put to you in this series of examples?”
Ned,
With all due respect, I do not address your questions becuase you have neither addressed the points that I have made nor answered my questions. You have blindly merely restated your position without regard to what I have posted.
On top of that, your questions and your sidetracking desire to speak to points and positions outside of the main topic that needs to be settled first indicate a desire to obfuscate rather than actually engage in a discussion of the main point. Address the main point first and finish one discussion and then we can look at your ancillary questions.
Anon, then why don't you answer the questions I put to you in this series of examples? We can talking about abstract concepts and start talking about real cases through these examples.
“the point here that who owns the invention is really not germane to the question of who owns the patent application”
You don’t make the point because you cannot make the point.
I keep on telling you this. You want to assume the point in order to have your result. You want to ignore the stipulated fact that the pirate is known to not be the inventor.
The problem is that your point is wrong.
I know that you are not taking my word for it, so see Stanford v Roche for an explanation.
Anon, or anyone, please gives un an answer.
I am trying to make the point here that who owns the invention is really not germane to the question of who owns the patent application.
Anon, regarding Um No, he must have missed my response to him. I did not stop the discussion of "inchoate rights."
Regarding Pennock, I will agree with you in principle that there could be two inventors of the same invention. If both file patent applications, I assume you will agree that each inventor owns his own patent application. The topic of who gets the patent is to be determined by the patent laws. It might be the first to file. It might be the first to invent. Or it might be neither depending on other circumstances.
Do you agree?
Anon, let's discuss a few examples:
1) a first inventor invents, a second inventor invents the same invention.
Who owns the invention?
If they both file patent applications, who owns the respective patent applications?
2) a first inventor invents having an employment agreement containing a present-assignment-of-future-inventions clause.
Who owns the invention?
If they both file patent applications, who owns respective the patent applications?
Vary from the above that the employer names himself as the inventor. Who owns the respective patent applications?
3) same as 1, first and second inventors of the same invention; however, a pirate of the first inventor files first and the second inventor files second. The first inventor does not file at all.
Who owns the invention?
Who owns the pirate's patent application?
Being a second inventor, can the second inventor still claim to be the owner of the first inventor's patent or patent application?
4) an inventor works for a boss of Big Red, but this time there is no present-assignment-of-future-inventions clause. He has, however, and obligation to assign. Both the inventor and the boss file patent applications on the very same day naming themselves as inventors. The boss assigns the patent application to Big Red. The inventor quits and goes to work for another corporation, call it Big Blue. He records an assignment of his patent application to Big Blue. Both Big Red and Big Blue are BFP's under the recording statute.
Who owns the invention?
Who owns the boss's application?
Who owns the inventors application?
I pause momentarily to remind you in part of one of your errant views on Pennock had to do with the difference between patent rights and inchoate rights.
Your statement of “interesting possibility of that only first inventors can file and obtain a patent on the invention because they are the only ones that have good title to the invention” seems to backtrack on that understanding of inchoate rights.
It is simply not true that only the first inventor has full patent rights – the first inventor has inchoate rights that must be turned into patent rights. There can be more than one “true” inventor. May I remind you that our fact pattern in this discussion concerns an entity known to NOT be a true inventor.
May I also remind you that the inchoate rights was a point of discussion that earned you the (eternal) enmity of Um No, who used the invitation to a track meet analogy that you (in your typical fashion) never seemed able to acknowledge.
Ned,
With all due respect, it is not I that is guilty of conflating concepts.
I do not speak of “title to an invention” as there is no such thing. I have only spoken of a patent, and who has title to the patent (the inventor not the invention).
You need to re-read what I have posted more carefully.
What I say also has nothing to do with derivation proceedings. I suggest you pay attention to this singular discussion instead of wandering about.
Likewise with “only first inventors” – stick to one topic please, as it seems that you have trouble enough paying attention to one thing.
Let’s return to point.
You state “The title to the patent is owned by the applicant, period.” But the problem you don’t seem to understand yet is that this is true ONLY IF the applicant is the actual inventor.
Re-read the Stanford v Roche case and see how the Court discusses the concept. They do not say “applicant,” but rather: “Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor.” (emphasis added).
What I am plainly telling you, on the fact pattern that we are discussing, is that the pirate is shown not to be the inventor.
Do you understand this?
If he is shown not to be the inventor, he needs to have an assignment from the inventor in order to have standing (because the chain of title is broken). He may well be the applicant, but the pirate-applicant is not the one first vested with title.
anon, you are still conflating and confusing title to an invention with title to a patent. The title to a patent is owned by the applicant. One does not have to have title to an invention in order to apply for patent. The title to the patent is owned by the applicant, period.
If you were/are right, the new derivation proceedings would result in both applications being owned by the party deemed to be the inventor. I hardly think this is going to be the case, do you?
And, your theory also raises the interesting possibility of that only first inventors can file and obtain a patent on the invention because they are the only ones that have good title to the invention. One cannot be divested of title once one owns it. The owner of the title has to assign it to a third-party.
“But regardless, title still inheres in the applicant regardless of whether he is the first inventor, or a second, or not at all.”
I see the point that you are missing. This starting point of yours is not correct (you are assuming as your starting point the end of the discussion).
The title inheres in the applicant only if the applicant is the actual inventor.
Your use of “whether he is the first inventor, or a second, or not at all” is a combination of non-sequitur (validity) and conflation of different concepts (multiple possible inventors and known pirate inventor).
The “multiple possible inventors” is not at play here.
Please note that I make no issue of the AIA change to validity/nonvalidity because such is quite beside the point (and hanging on to that will only confuse you).
Put simply, someone who is known not to be the inventor (as is stated in our discussion) cannot have title. Period. As I pointed out, this breaks the chain of title at the first step.
Start with that thought, and then move to the challenge under standing. The reasonable theory to challenge standing simply has no nexus to validity and every nexus to proving the pirate is not an inventor.
You also may be confused with a case of proving that the pirate is not the inventor. That too is a different discussion. For our purposes, it is stipulated that the pirate is known not to be the inventor.
You are making this way too hard for yourself.
If you want to discuss a different fact pattern (one in which you want to accuse the applicant of being a pirate, or one with multiple appllicants, each with the respective applicants still owning their applications), we could do that, but first let’s get your head wrapped around this first fact pattern.
anon, title to a patent application inheres originally in the applicant. Under present law, the patent is invalid if the named inventor is not an inventor. Under the new AIA, it is not invalid. But regardless, title still inheres in the applicant regardless of whether he is the first inventor, or a second, or not at all.
If title to an invention could not be divested such that others who came later could not get good title, then your view would be entirely consistent with a first-to-invent system. But even there, between rival inventors, the respective applicants still own their applications.
So, I really do not believe there is a reasonable theory to challenge inventorship at the standing stage.
Ned, you need both (inventor and title).
As Stanford v. Roche recently showed, title first vests with the inventor. In our example, that very first link is broken as the pirate is known not to be the inventor. The true inventor can bring suit on the valid patent, but not the pirate. Inventorship does not only go to validity.
I think you are making this more complicated than need be, and less than the full picture at the same time.
anon, you misunderstand standing. Title is the issue. The named inventors have title. Their assigns have title. Their successor have title.
Inventorship goes to validity …. or at least it used to.
Ned,
On the contrary, standing is an issue that can always be raised. If the pirate cannot establish himself as the inventor (a given under our discussion), he cannot have standing on a court to enforce the patent (yes, the valid patent).
So where is the harm?