Inventor (patent)
Encyclopedia : I : IN : INV : Inventor (patent)
| Patentability |
|---|
|
| 1 Under European patent law, inventorship |
| ''is not relevant to patentability. |
| [http://encycl.opentopia.com/ edit box] |
Under U.S. case law, an inventor is the one with "intellectual domination"[#endnote_inteldom] over the inventive process, and not merely one who assists in its reduction to practice. Since inventorship relates to the claims in a patent application, knowing who an inventor is under the patent law is sometimes difficult.
"Joint inventors" exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work.
Absent a contract or license, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention.[#endnote_ethicon]
Inventorship
European Patent Convention
Under the European Patent Convention (EPC), identifying the inventor of a given invention is theoretically very important since "[t]he right to a European patent (...) belong[s] to the inventor or his successor in title" (), according to the first-to-file principle (). In practice however, the European Patent Office (EPO) never investigates whether the proposed inventor is indeed the true inventor. Indeed, "[f]or the purposes of proceedings before the [EPO], the applicant shall be deemed to be entitled to exercise the right to the European patent" ().
Court actions relating to the entitlement to the grant of a European patent must be brought before the national court which has the jurisdiction. The jurisdiction is determined in conformance with the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" or, in short, the "Protocol on Recognition" [link]. Once a final decision is issued by a national court adjudging that the applicant is not entitled to the grant of a European patent, the procedure according to is applicable.
In contrast with U.S. patent law, the applicant for a European patent needs not be the inventor. The right to the European patent may validly be transferred before the filing of the application, e.g. by contract, by inheritance, or as a consequence of the "employee's rights" as determined by the applicable national law (). However, the inventor has the right to be mentioned as such before the EPO (). The EPO does not verify the accuracy of the designation of the inventor (). The inventor may waive its right to be mentioned as such in the European patent application and European patent specification ().
Inventorship is traditionally not classified as a patentability criterion under European patent law, in contrast with U.S. patent law.
United States
In the United States, a patent application must be filed in the name of the inventors. This requirement that a patent be taken out in the name of the inventors is derived from the intellectual property clause of the United States Constitution:
The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries(emphasis added).
An inventor is a party who has contributed at least one claim to a patent. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." Courts recognize that invention is rarely a solitary endeavor. Therefore, conception and "intellectual domination" over an invention is important and "reduction to practice, per se, is irrelevant. One must contribute to the conception to be an inventor."
Generally, conception is "the complete performance of the mental part of the inventive act", and "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.."[#endnote_townsend] (emphasis added). An idea is usually not "definite and permanent" or "complete" where changes resulting from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.
The naming of inventors is very important for the validity of the patent. Intentionally failing to name, or incorrectly identifying inventors, can result in a patent being held invalid. Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.
An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assigned before publication. Assignment of rights in a patent does not alter to whom the patent is actually issued. In fact, an assignee may only have an equitable interest in the patent until it is issued and then legal interest would transfer automatically.
Notes
- ↑ Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965)
- ↑ Ethicon v. United States Surgical Corp., 135 F.3d 1456, 45 U.S.P.Q.2d 1545 (Fed. Cir., 1998)
- ↑ Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930)
External links
From Wikipedia, the Free Encyclopedia. Original article here. Support Wikipedia by contributing or donating.
All text is available under the terms of the GNU Free Documentation License See Wikipedia Copyrights for details.