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Facilitating Technology Transfer to Serve Faculty and Community
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Invention and Inventorship to Potential InvestorsI.What Constitutes an InventionAn invention is a novel and non-obvious idea that is reduced to practice or that is capable of being reduced to practice by competent technicians or mechanics. The inventive process has two steps: (A) conception and (B) reduction to practice. A. ConceptionA conception is the formulation in the mind of an inventor of the complete means for solving a problem. The mere recognition of a problem or a desirable result or a general approach to solving the same without the perception or realization of means by which the result can be produced or the result accomplished or the problem solved will not suffice as conception. The conception, in order to qualify for purposes of inventorship, must be such as would enable a person skilled in the art to reduce the conception to practice without undue experimentation or research or exercise of inventive skill. In other words, conception must be such that the completion of the invention requires no more than routine skill. The complete conception of a chemical compound requires (1) the conception of the structure of the chemical compound and (2) possession of an operative method of making it. B. Reduction to PracticeAn invention is not complete until it has been reduced to practice either actually or constructively. Actual reduction to practice means (1) the physical construction of the invention, and (2) the testing of the physical embodiment to determine whether it performs as contemplated. The invention need not be perfect or incapable of further improvement to constitute actual reduction to practice. Also, there must be contemporaneous recognition and appreciation of success. The reduction to practice need not be carried out by the inventor(s), but it must be carried out under his or her direction. Of course, conception may occur at the time of reduction to practice. Constructive reduction to practice means the filing of a patent application on the invention and is treated as the full equivalent of an actual reduction to practice. II. Who Constitutes an InventorThe following is the basic standard for determining joint inventorship: A joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final result. Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work on the project together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each of the inventors plays a different role and that the contribution of one may not be as great as that of another, does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem. After characterizing joint inventorship as "one of the muddiest concepts in the muddy metaphysics of the patent law", another judge stated the following: On the one hand, it is reasonably clear that a person who has merely followed instructions of another in performing experiments is not a co-inventor of the object to which those experiments are directed. To claim inventorship is to claim at least some role in the final conception of that which is sought to be patented. Perhaps one need not be able to point to a specific component as one's sole idea, but one must be able to say that without his contribution to the final conception, it would have been less -- less efficient, less simple, less economical less something of benefit. The more specific the conception of a proposed inventor or co-inventor, in terms of structural details or details of process steps, the more likely such person is an inventor or co-inventor, other things being equal. One approach that is often used in determining inventorship is to ask the question, "If this idea had not been contributed, would the claimed invention exist?" If not, the person who contributed the idea is probably an inventor. The idea does not have to be related to the entire invention or be of equal stature to other inventive ideas, but must contribute to the development of the claimed invention in some way. Co-workers in typical situations leading to inventions may generally be divided into three groups with respect to inventorship:
As you can tell from the repeated references to the "claimed invention", it is important to consider the invention in terms of the claims of the patent application. The claims point out and define the invention from a legal viewpoint. Because of this, it is important to use claims as guides for any discussion about inventorship and not to discuss inventorship merely in terms of the broad "inventive idea." If the question of inventorship is approached by considering the claims of the application on a phrase-by-phrase or even word-by-word basis, it is generally possible to resolve the question of inventorship without ill-will arising between co-workers. In situations in which the invention will be published, questions often arise about persons who would normally be listed as authors in a publication. The courts have specifically held that authorship and inventorship have different criteria and are not equivalent. Inventorship must be considered using the criteria discussed above and must not be confused with authorship. If it later appears that an unintentional mistake in naming inventors was made, inventorship can be changed either during prosecution before the Patent Office or after a patent has actually issued. In fact, it sometimes becomes necessary to change the named inventors during prosecution of the application when the claims are amended to avoid prior art newly uncovered by the Patent Office (e.g., when the entire contribution of one inventor is dropped from the claims in order to avoid prior art or when the claims are subject to a restriction requirement so that the contributions of one inventor are divided out into a separate application). A reasonable and responsible decision on inventorship is all that is required. Please provide the following information to help us in determining correct inventorship. Title of Invention: Our File No.: Name of Potential Inventor: ____________________________
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