by Dennis Crouch
Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.* Conception is typically referred to as a mental act. The MPEP, for example, includes a statement in all-caps that “CONCEPTION MUST BE DONE IN THE MIND OF THE INVENTOR.” MPEP 2138.04(I). The basic rule is that the inventor must have a “definite and permanent idea of the complete and operable invention.”
The mind-of-the-inventor doctrines have several problems, today I’m thinking about one relating to joint inventorship. As far as I know, the definitional cases regarding conception refer to “the inventor” as if inventorship is a solo process. But 75% of new patents list two or more inventors who are unlikely to have experienced joint or simultaneous conception. It turns out though that simultaneous conception is not required. Rather, this is how it works.
- Multiple human people provide significant contributions toward a complete invention;
- At some point, one of the individuals puts on the pieces together in a manner sufficient to be called conception.
- Although only one person conceived, all of the contributors receive credit for the conception as joint inventors, even if they never understood the full invention.
This setup played out in the Federal Circuit’s 2020 Dana-Farber decision, and the court confirmed that two Harvard researchers who contributed early on in the invention process deserved to be listed as co-inventors with Kyoto University’s Dr. Honjo even though it was Honjo who actually conceived of the invention. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd., 964 F.3d 1365 (Fed. Cir. 2020), cert. denied sub nom. Ono Pharm. Co., Ltd. v. Dana-Farber Cancer Inst., 20-1258, 2021 WL 2044661 (U.S. May 24, 2021)
In practice, the invention is defined and shaped by the patent prosecution process, and so my easy linear process above is often only something that can be seen retrospectively once we understand the actual scope of the claimed invention.
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* Above, I referred to conception as the key invention marker. Of course, the law of invention states that the invention is not complete until the invention is reduced-to-practice (either actually or constructively). Reduction-to-practice takes the idea and verifies that it actually works in practice. I think that RTP gets short shrift in the patent system, but the law is clear that a joint inventor’s contribution may be at that post-conception stage. As Judge Lourie explained in Pannu v. Iolab Corp.:
All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).
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Painting above is a portion of The Immaculate Conception by Giovanni Battista Tiepolo (1696–1770).
here’s a candidate
this was supposed to be a reply to # 3.
“In practice, the invention is defined and shaped by the patent prosecution process, and so my easy linear process above is often only something that can be seen retrospectively once we understand the actual scope of the claimed invention.” Which largely means that the patent agent/attorney is a joint inventor in many cases, but invariably hides that fact. No good solution for this one….
Thanks!!
“Which largely means that the patent agent/attorney is a joint inventor in many cases”
An academic trope largely ignored (and for good reasons) outside the Ivory Tower.
An IDEATOR comes up with an IDEA – what he wants or suggests doing and sounds original. An INVENTION is what is left after subtracting the PRIOR ART from the idea, which is uncovered during prosecution by practitioners and examiners. An INVENTOR is an ideator whose idea survived prosecution and was granted a patent.
A JOINT IDEA is created by a team of ideators. Let’s say that the joint idea of ideators X and Y is made up of elements A+B+C. A is a feature created cooperatively by X and Y; B and C are features added independently by X and Y, respectively. If A survives prosecution, then X and Y are joint inventors. If A is beaten by prior art, yet B and C are both found novel and non-obvious, then what should happen is that X and Y obtain two separate patents on B and C. However, since the specification story focuses on A, most likely the granted patent will claim A+B and A+B+C, which will turn X and Y into joint inventors.
The interesting, and common case is when C is also beaten by prior art, but no one cares – claiming A+B and A+B+C turns X and Y into “legitimate” joint inventors, although Y has invented nothing new.
Not sure why the concept of corporate personhood has not made it into the patent act, but ISTM that a corporate inventor could be reasonably represented by a corporate officer. If the aggregate activity of a company produces innovation, the corporation can truly be distinguished as an inventor…
Not sure why?
Stanford v. Roche explains this.
See 563 U.S. 776 (2011). By the way, we should be limiting the power of the juristic person of corporations — not expanding it.
Stanford v. Roche did not address the Constitutionality of a patent statue that recognized corporate inventorship.
But is does address WHY a real person inventor is necessary.
Maybe start there, Marty. Understand that terrain.
The idea of “conception” is outdated. Modern product development is no longer the Edisons of the world in their labs churning out patents. It is a huge team effort often with subtle contributions that are not always recognized.
The normal process for determining inventorship in the place where I was a practitioner for 20 years was to ask who was an inventor and circulate a form defining inventorship around potential inventors and then wait for everybody to claim they qualified. Then the challenge was to try to eliminate some, and thereby deprive them of the few hundred dollars bonus the company handed out as rewards for filing an application and and then having a patent issue. You became nobody’s friend that way.
Most people were involved in RTP and much of that was routine data collection. In a large company the marketing guys more often or not had the conception that they recognized via market forces.
We (the U.S.) should go the European (and others?) way and recognize that inventors include everybody that everybody agrees contributed. Including the boss’s mother in law if necessary. At least that is how I remember it being done there.
Ham, you write that the notion of conception is “outdated”. Me, I think it was intrinsic to a First to Invent system but irrelevant to any First to File system.
You surmise that we Europeans nominate Uncle Tom Cobbleigh and both his dogs as inventors, but in these days of increased international activity and litigiousness, I doubt that holds any more. Germany and Japan have an Employee Inventor Law which grants named inventors important ownership and compensation rights. It is definitely not a good idea, for example, to include as a named inventor your Herad of research and then, a year later, tell that persoon that you are “letting them go”. The aggrieved named inventor has numerous legal ways to express their feelings about their former employer.
The law also protects those who should have been named as inventor, but weren’t. The consequences can be just as problematic for a careless employer.
So, best just get inventorship right. The Goldilocks problem, as ever. Just enough names, not too many, not too few. You can easily add one later, but striking out a named inventor can be difficult to impossible.
How about divisionals, for example? In Europe, one checks carefully, whether all the inventors named in the parent application are proper to name in the divisional? Is that how it is, also in the USA?
Is there an Immaculate Reduction to Practice painting to support this
post too?
That may be post-modern and so still under copyright.
… Fair Use….?
I see this as an interesting (possible) segue to “co-inventorship by an AI entity.”
FYI:
link to globallegalpost.com
Just a couple of caveats. First, one can become a joint inventor on a patent by adequately contributing to only one of the [even dependent] claims. [Hence, removing certain claims from the application may change the proper inventorship designation on the patent.] Secondly, the above Judge Lourie alternative statement that “All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception OR reduction to practice of the invention..” must also consider other well established case law that the reduction to practice contribution of another person must be more than just routine steps conducted under the direction of the invention conceiver.
As Dennis notes, a prior “actual reduction to practice” [versus filed-application “constructive reduction to practice”] was previously more important, before the AIA capped interferences. Actual reduction to practice was often key to the ability of the relatively few second-to-file applicants or patentees who were able to win an interference based on invention count priority rather than other issues.
Paul,
Your absence from prosecution is showing with the comment of, “ prior “actual reduction to practice” [versus filed-application “constructive reduction to practice”] was previously more important, before the AIA capped interferences”
WAY before the AIA, constructive reduction to practice was widespread, and the ‘importance’ you note was not so.
Perhaps your ‘experience’ with interferences is coloring your judgment and recollection. They just were not that common.
“More” is not “a lot” as I had already indicated with “the relatively few second-to-file applicants or patentees who were able to win an interference based on invention count priority rather than other issues.”
Way to absolutely miss the point there, Paul.
Your “clarification” does nothing about the point I presented.
Your
“prior “actual reduction to practice” [versus filed-application “constructive reduction to practice”] was previously more important, before the AIA capped interferences.”
remains badly off, showing your disconnect from actual practice.
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