U.S. Patent Laws For Inventions: A Brief Guide for Inventors
According to the United States laws, patents grant their holder the absolute right over the invention for which it was issued. This legal right grants the inventor autonomy over the invention.
But while that could be construed, even loosely, as invincibility, it's important to understand your rights as a patent holder and what the law actually translates to.
Patent holders have the right to prevent other parties (individuals or entities) from selling, importing or using their invention without permission or authorization from the inventor.
The United States constitution grants authority to the patent law.
Formulated as an incentive to inventors, patent laws encourage inventors to put their knowledge and invention ideas out to the public.
Under the current patent laws, inventors enjoy twenty years monopoly on the invention they hold a patent for. At the end of this monopoly period, the invention becomes public property, available to be used by all and sundry.
What The Law Says About Conception Of An Invention
Owing to the fact that US Courts understand that an invention is generally a contributory endeavor, the major decider in the recognition of inventorship is the identification of the conceiver of the invention or invention idea.
Hence, the reduction of an invention to practice becomes irrelevant, while the inventorship of an invention is highlighted in the conception of the invention idea and “intellectual domination” over the invention.
According to the United States patent laws, to be recognized as an inventor of an invention, one has to be a contributor to the conception of the invention idea.
Ideally, when the mental aspect of an inventive act has been completely performed, and when there has been a permanent and definite idea of a complete, operational and applicable invention in the inventor’s mind, conception is established.
Here, the inventor claims full inventorship of the invention.
Everything above is gospel...except...
When there are changes resulting from experimentation, the invention idea cannot be said to be permanent, complete or definite.
In this situation, the other individuals who made meaningful contributions to the making the invention idea permanent and definite will be listed as co-inventors.
Filing a patent application in the United States requires inventors to use their name.
This requirement is culled from the united state constitution’s “intellectual property clause,” and it validates the invention patent.
According to United States patent law, an inventor is referred to as a person or a group of people who make contributions to a patentable invention. To be referred to as an inventor, the party involved must have contributed a minimum of a claim to the patent.
Under the case law in the United States, anyone with the “intellectual domination” over an invention process is referred to as the inventor.
It does not take into recognition those who only assisted in reducing the patent into practice.
It is however very hard under the patent law to identify who the inventor of an invention or invention idea really is.
This is even made even more difficult because the inventorship often relates to claims written in the application filed for the patent.
Apart from this, when processing a patent application, there can be changes to inventorship due to the amendment and deletion of claims in the patent application.
According to United States patent law, an inventor is referred to as a person or a group of people who make contributions to a patentable invention.
Speed Matters: "First Inventor To File" (FTF) Law
In most places in the world, patent rules state that when two people apply for a patent on the same or near-same invention, the person who filed his application first gets the patent.
Until 2013 in the U.S., however, determination of who gets the patent was made according to priority of invention. The patent was awarded to the person who could demonstrate that they discovered the invention first (AKA "First-to-invent").
The first-to-invent rules favored the smaller and independent inventors, to some extent, over large corporations. Small inventors tend to take more time to prepare their patent applications and therefore would, in a first-to-file system, lose to major corporate inventors who are capable of hiring armies of patent lawyers
In 2013, despite the potential implications on innovation, the United States changed its patent laws by moving from "first-to-invent" to a “first-to-file” (FTF) system.
With the FTF system implemented, the first applicant to file patent protection of their idea is prioritized in the regards of inventorship.
Joint Inventors: What Does The Law Say About Who Gets The Patent?
When there are more than one contributors to the invention, each contributor is named as a co-inventor or joint inventor in the patent application and in the invention patent when issued.
There is also the existence of joint inventors even when the vast majority of the invention work was contributed by one inventor.
In the absence of a license or contract, the rights issued in the patent are owned by the individual inventors.
Identifying inventors incorrectly, or deliberately refusing to name the inventors could result in the invalidation of the invention patent.
Normally, courts identify the inventors named in a patent as the inventors, as long as disagreements do not arise.
Assignment Of Rights
It is not possible for an inventor to decide against being mentioned in an invention patent, even when the application for the patent was published after being assigned.
When assigning patent rights, there is no alteration to exactly whom a patent is issued to.
In fact, until a patent is issued, an assignee might actually have only an equitable interest. In the event that an inventor declines the execution of an application, becomes mentally unstable, is incapacitated legally, goes missing or dies, someone else apart from the inventor can thence make an application.
Important Patent Cases Through History
Over the years, there have been quite a number of patent cases that have had to be settled in the United States courts. A few of the notable patent cases are as follows:
Diamond vs Chakrabarty (1980)
As General Electric employee, Ananda Chakrabarty proposed a way of combating oil spillage by developing a bacterium that is capable of catabolizing crude oil.
A patent application was filed for the bacterium by General Electric, with Chakrabarty named as inventor.
Under patent law however, living things are not generally patentable. The patent examiner therefore rejected the application on this ground.
The Board of Patent Appeals and Interferences was in agreement with the rejection; but the decision was overturned in the favor of Chakrabarty by the United States Court of Customs and Patent Appeals.
The court stated that for patent law purposes, microorganisms being alive have no legal ramification or significance.
The Patents and Trademark commissioner, Sidney Diamond, filed an appeal to the United States Supreme Court.
The court however also ruled in Chakrabarty’s favor, stating that a live, man-made micro-organism can be patented. The USPTO granted the patent in 1981.
Pfaff vs Wells Electronics Inc. (1998)
Wayne Pfaff in 1980 designed a socket for Texas Instruments.
In March of the following year, he drew the socket’s designs and showed it to the company. Texas Instrument made a purchase order to buy over 30,000 sockets in April 1981, but the product was not built until July 1981.
Pfaff applied for and was granted the patent for the sockets in 1982 and 1985 respectively.
However, when Wells Electronics Inc. produced a socket similar to Pfaff’s design, they were sued for patent infringement.
In their defense, Wells Electronics Inc. argued that the patent was not valid, because Texas Instrument’s purchase order had put the invention “on sale,” for over one year, before a patent application was filed.
In countering Wells’ argument, Pfaff argued that a working model of the invention was not made prior to the patent application, which implied that the invention had not been reduced to practice before filing a patent application. Pfaff maintained that the invention cannot be said to be “on sale” before the application for patent was filed, because the sockets have not been produced at the time the orders were placed.
In its ruling, the District court ruled in favor of Pfaff, while the Court of Appeals reversed the ruling.
The court of Appeal for the Federal Circuit (CAFC) ruled that the patent was invalid as it was “substantially complete” when the orders were placed. Pfaff took the case to the Supreme Court.
The Supreme Court in its ruling upheld the decision of the CAFC, stating that a product is considered “on sale” if it was subjected to a sale offer and if the invention could have been patented before being reduced to practice or if its description makes building the invention possible by a skilled person.
Based on these considerations, the Supreme Court ruled Pfaff’s patent invalid.
Abbott vs Sandoz (2009)
Decided in 2009, this case established a distinctive line as regards patent infringement claims that relate to “product-by-process” disagreement.
The invention in question was a drug – Omnicef – that was used to treat ear infections and the patent for the drug was issued to Abbott Labs.
However, claiming that it produced a different form of the same drug, because it used a different method of production, Lupin Limited got a court rule that it wasn’t infringing on the drug’s patent.
Countering, Abbott appealed the case in combination with lawsuits filed against several other pharmaceutical companies. The suit was thereafter renamed as Abbott vs Sandoz.
For many years, there have been disagreements in court on the definition of “product-by-process.”
Basically, product-by-process deals with the determination of the legal differences between products that were produced using different processes. There have been contradictory rulings by the courts on cases relating to product-by-process.
In this case however, the court of appeal ruled in favor of Sandoz and the several small pharmaceutical companies.
The court held that since the processes used in the production of the drug was different from the one used by Abbott, there is no case of patent infringement. Also, the court held that other companies can produce the same drug using other processes, because Abbott did not patent all the processes of producing the drug.
The Abbott vs Sandoz case highlighted the definition of product-by-process. It also enforced the fact that there is no patent infringement on an invention manufactured through a different process, unless otherwise stated in the patent.
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