Prevent Faculty Disputes
From Turning Into a Declaration of War
• Chester A. Bisbee, Ph.D., J.D.
• Jean C. Baker, Ph.D., J.D.
Introduction
• Who are we and why do we care about
inventorship?
• This presentation:
– legal analysis
– real world commentary
Why Is Correct Inventorship
Important?
• Legal Issues
– Unenforceable - Intentionally listing incorrect inventors can
render the patent unenforceable due to inequitable conduct.
– Expensive – Sorting out inventorship can result in costly
litigation.
– Dangerous – Incorrect inventorship can result in unnamed
inventors (who can prove they are inventors) licensing the
entire invention without the knowledge or consent of the other
inventors/owners.
Why Are Universities and Research
Institutions Unique?
• Internal Issues
– Academics are their own bosses.
– Faculty disputes (not related to the matter at hand can
have long-lasting and far reaching consequences).
– Money, Money: Named inventors can have strong
financial incentive.
– "Inventorship" can seem, to academics, like
"authorship".
Why Are Universities and Research
Institutions Unique?
• External Issues
– The type of inventions that universities tend to
produce are the most difficult to review for
inventorship.
– Ownership issues (lots of collaboration).
– Informal nature of development and informal
contacts with "outsiders".
Examples
• Inventor(s) does not acknowledge the
contribution of others.
• Inventor(s) attempts to hide the
existence of additional Inventor(s).
• Inventor(s) substitutes important
individual(s) as Inventor(s)
Who is an "Inventor"?
• An inventor conceives the invention or
contributes to the reduction to practice of
the invention
• The contribution must be intellectual
What is "Conception"
• Conception is "the complete performance of the
mental part of the inventive act" and it is "the
formation in the mind of the inventor of a definite
and permanent idea of the complete and operative
invention as it is thereafter to be applied in
practice"*
*Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). Hiatt v. Ziegler, 179 USPQ 757,
763 (Bd. Pat. Inter. 1973); MPEP 2138.04; Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed.
Cir. 2001.
What is "Conception"
• "[C]onception is established when the invention
is made sufficiently clear to enable one skilled in
the art to reduce it to practice without the
exercise of extensive experimentation or the
exercise of inventive skill."
What is "Conception"
• Conception is shown when a party shows
possession of every feature recited in the claim,
and every limitation of the claim was known to
the inventor at the time of the alleged
conception.
• Conception must be proven by corroborating
evidence.*
*Hybritech Inc. v. Monoclonal Antibodies Inc., 802 F.2d 1367, 1376, 231 USPQ
81, 87 (Fed. Cir. 1986).
What is NOT Conception?
• An inventor does not have to reduce the invention to
practice (i.e., actually make it work).*
• An inventor must contribute more than an idea of a result to
be accomplished. An inventor must contribute the means of
accomplishing the desired outcome.¤
• This distinction has been a significant issue in JCB's
practice.
*Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1986).
¤Ex parte Smernoff, 215 USPQ 545, 547 (Bd. App. 1982).
What is NOT Conception?
• " It is not essential for the inventor to be
personally involved in carrying out
process steps where implementation of
those steps does not require the exercise
of inventive skill"*
*In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA
1982).
University Example
• Inventor's "hope" that a genetically altered yeast
would produce antigen particles having the particle
size and sedimentation rates recited in the claims did
not establish conception, since the inventor did not
show that he had a "definite and permanent
understanding" as to whether or how, or a reasonable
expectation that, the yeast would produce the recited
antigen particles.*
*Hitzeman v. Rutter, 243 F.3d 1345, 58 USPQ2d 1161 (Fed. Cir. 2001).
What is an "Intellectual
Contribution"
• Any contribution that is "not insignificant in
quality when measured against the dimension of
the full invention."*
• Any intellectual contribution appreciated as
significant by the inventor; it can't be
unrecognized or accidental.
*Pannu v. Iolab Corp. 155 F.3d 1344, 1351, 47 USPQ2d 1657 (Fed. Cir. 1998).
What is NOT an "Intellectual
Contribution"
• discovery of a problem, but not the solution.
• routine skill
• explaining or providing the state of the art
What is NOT an "Intellectual
Contribution"
• supplying product for use in the invention
• derivation (the complete conception of the
invention and communication of that conception
to another*) of the invention is not inventorship¤
* Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).
¤ 35 USC 102f
Example
• Real-life case showing what can happen
when these ideas get confused
An Inventor Can Have Help
• An inventor can use ideas,
suggestions and materials from others
and still be an inventor.
An Inventor Can Have Help
• "In arriving at conception [the inventor] may
consider and adopt ideas and materials derived
from many sources [such as] a suggestion from
an employee, or hired consultant so long as he
maintains intellectual domination of the work of
making the invention down to the successful
testing, selecting or rejecting as he goes, even if
such suggestion [or material] proves to be the
key that unlocks his problem."*
*Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).
Who Is NOT an Inventor?
• One following oral instructions is
viewed as merely a technician.
• A skilled mechanic carrying out the
details of a plan devised by another.
• Differentiating between one making an
intellectual contribution and one acting
as a skilled mechanic can be difficult.
Who is a Joint Inventor?
• Joint Inventors are two or more collaborators who*:
– each generally contribute to the conception of the invention.
– exhibits "some element of joint behavior, such as collaboration or
working under common direction, one inventor seeing a relevant
report and building upon it or hearing another's suggestion at a
meeting.¤
* Fritsch v. Lin, 21 USPQ2d 1737, 1739 (Bd. Pat. App. & Inter. 1991).
¤ Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-917,
23 USPQ2d 1921, 1925-1926 (Fed. Cir. 1992).
A Joint Inventor Can*
• work in a different physical location and at different
(although overlapping) time.
• make a different type or amount of contribution.
• make a contribution to the subject matter of only one
claim of the patent.¤
• arrive at the inventive concept at a different time.±
* 35 USC 116
¤ Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460-63, 45 USPQ2d
1545, 1548-1551 (Fed. Cir. 1998). (The electronics technician who contributed to one
of the two alternative structures in the specification to define "the means for detaining"
in a claim limitation was held to be a joint inventor.)
± Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960).
Who is NOT a Joint Inventor?
• one who made the necessary contribution during a
separate, non-overlapping period of time.
• an author of a paper who did not make the necessary
contribution.
• an inventor in a corresponding foreign application that
did not make the necessary contribution.
• a patent attorney or tech transfer office employee just
"doing their job"*
* Solomon v. Kimberly Clark, 216 F.3d 1372 (Fed. Cir. 2000).
How Can You Document Joint
Inventors in Team Setting?
• Bound lab notebooks always the best
practice
• Sticky pad solution: give each team
member a different color paper and
have all ideas written down, dated and
collected after each meeting
• Depend on separate recollections.
• Grant Proposal often useful
University of Pittsburg vs.
Hendrick
• Typical fact pattern for Universities
• University of Pittsburg of Commonwealth
System of Higher Educ. v. Hedrick, 573 F.3d
1290 (2009).
Practical Advice: How do you
identify an inventor?
Ask Questions
• What did he or she contribute?
• When?
• Where?
Practical Advice: How do you
identify and inventor?
• Request written documentation because
testimony of inventor and patent attorney given
little probative value*
• Lab Notebooks
• Grant Proposals
• Publications and Manuscripts
* Solomon v. Kimberly Clark, 216 F3d. 1372 (Fed. Cir. 2000).
What Role do Tech Transfer
Personnel Play in Determining
Inventorship?
• Knowledge of inventor’s work
• Knowledge of inventor’s lab
• Who did what?
• What claims are each inventor responsible for?
• Who has assigned and who needs to?
What is Documentation?
• Lab notebook (or electonic equivalent)
• Writings (articles, posters, abstracts)
• Presentations (powerpoint)
What is the Effect of
Inventorship on Ownership?
• Inventorship is NOT ownership
• An owner is not necessarily an inventor.
• Inventors "own" 100% of the invention, but usually
assign their ownership rights to another party (i.e.,
employer).
• Owners can sell or license the invention and can sue to
prevent others from MAKING, USING, or SELLING
the invention. An inventor who is not an owner (i.e.,
has assigned their rights to another) has no such rights.
Who Is An Owner?
• Does inventor have an obligation to
assign?
Special University Problems with
Ownership
• "Wisconsin Style"
• IP going out the “back door”
• Joint university-company
ownership
– Start-up problems
– The mysterious CIP
How Can Ownership Be Changed?
• Are there additional co-inventors?
• Has inventorship changed?
What is the Effect of
Inventorship on Licensing?
• Who can license the application?
What is the Effect of Contracts
on Inventorship/Ownership?
• Employment agreements
• Sponsored research
agreements
• Confidential disclosure
agreements
Who Determines Inventorship?
• When are outside counsel useful and when are
they not useful?
– Not useful
• Mediate faculty disputes and help tech transfer
maintain internal relations
– Useful
• Be the "hired gun" and apply legal analysis
• "Draw fire"
Who Can Change Inventorship?
• Owners
• Inventors
When Can Inventorship Be
Changed?
• When error was made without
deceptive intent (don't have to prove
"no deceptive intent").
– Inventorship designated to avoid
prior art can't be changed
– Inventorship designated to avoid
priority dispute can be changed
When Can Inventorship Be
Changed?
• If parties agree:
– Before the Declaration is filed
• What is the role of the Application
Data Sheet on inventorship?
– While the application is pending
(requires all parties agree that
inventors need to be changed)
• File a request for Certificate of
Correction under 37 CFR 1.48a
When Can Inventorship Be
Changed?
• If parties agree:
– After allowance/issuance
• File Certificate of Correction
under 37 CFR 1.324
When Can Inventorship Be
Changed?
• If Parties do NOT agree
– Before issue
• File a request for Certificate of
Correction under 37 CFR 1.48a
with a petition under 37 CFR
1.183 to waive the requirement
for a re-executed oath or
declaration.
• File a continuation application
When Can Inventorship Be
Changed?
• If parties do NOT agree
– After Issue
• File reissue application
• File declaratory judgement
• Provoke an interference under 37
CFR 41.202(a) within one year of
issuance
What Happens When an
Inventor is Unavailable?
• Deceased Inventors
– Legal heirs/administrators must be
found and documented to USPTO
(unless valid assignment executed
prior to death)
• Incapacitated Inventors
What Happens When an Inventor
is Unavailable?
• Missing Inventors
• Uncooperative Inventors
Any Questions?
Jean C. Baker, Ph.D, J.D.
414.277.5709 – jean.baker@quarles.com
Chester Bisbee, Ph.D., J.D.
631.632-9009 – chester.bisbee@stonybrook.edu