1. INTELLECTUAL PROPERTY PROTECTION OFFICE OF PATENT COUNSEL March 16, 2001

2. INTELLECTUAL PROPERTY PROTECTION INVENTORSHIP PATENT APPLICATION FILING PRACTICES

3. INVENTORSHIP Francis A. Cooch Patent Counsel

4. OUTLINE Who can file for a patent? Who is an inventor? Conception Proof of inventorship Joint inventorship Inventorship – who determines and when Correction of inventorship PLUS ADDED BONUS: LEGAL DEFINITIONS

5. WHO CAN FILE A PATENT APPLICATION? Title 35 of the U.S. CODE states: “An application for patent shall be made, or authorized to be made, by the inventor ….” 35 USC 111(a) “When an invention is made by two or more persons jointly, they shall apply for patent jointly ….” 35 USC 116

6. WHO CAN FILE A PATENT APPLICATION? In short, under Federal law, ONLY INVENTORS!* *At APL, Lab entitled to assignment of rights.

7. Requirement for Oath or Declaration Title 35 of the U.S. CODE states : “The applicant [for patent] shall make an oath that he believes himself to be the original and first inventor of the [invention], for which he solicits a patent ….” 35 USC 115

8. INVENTORSHIP IS DIFFERENT FROM AUTHORSHIP

9. WHO IS AN INVENTOR? Anyone who contributes to the CONCEPTION of the invention

10. What is CONCEPTION? “Conception is the touchstone of inventorship, the completion of the mental part of invention.” Fed. Cir.

11. What is CONCEPTION? (cont.) “Conception is a definite solution to a problem that can be explained to and understood by one skilled in the art and that requires only the assistance of one of ordinary skill in the art to reduce to practice.” Fed. Cir.

12. Conception exists if: “… the inventor(s) had an idea – a specific settled idea, a particular solution to the problem at hand and not a general goal or research plan – that was definite and permanent enough that one skilled in the art could understand the invention.” What is CONCEPTION? (cont.)

13. Wright Brothers IDEA DETAILED SOLUTION JOINT

14. INVENTORSHIP IS DIFFERENT FROM AUTHORSHIP

15. PROOF OF CONCEPTION Supported by corroborating evidence Contemporaneous written disclosure Lab Notebook!

16. JOINT INVENTORSHIP “A joint invention is the product of collaboration of the inventive endeavors of two or more persons working towards the same end 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 ….” Dist.D.C.

17. JOINT INVENTORSHIP (cont.) “Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 USC 116

18. JOINT INVENTORSHIP (cont.) Joint conception may exist where: There were joint labors Contributions are made by each are different Contributions were made independently Invention conceived in stages in R&D effort

19. JOINT INVENTORSHIP (cont.) Joint conception will not exist where: One contributes an obvious element One merely suggests an idea One only follows instructions One explains how or why the invention works One participates in consultations prior to or after conception

20. INVENTORSHIP IS DIFFERENT FROM AUTHORSHIP

21. WHO DETERMINES INVENTORSHIP? Inventorship is a legal determination to be made by the patent attorney based on the facts in each case.

22. WHEN IS INVENTORSHIP DETERMINED? When the patent application has been drafted and is ready to be filed – the claims define the invention(s) for which inventors will be determined.

23. CORRECTION OF INVENTORSHIP Good faith error – can be corrected and does not render patent invalid Deceptive intent – patent can be held invalid

24. SUMMARY Only inventors can apply for a patent Inventorship defined by contribution to conception, i.e., to the definite solution to the problem Proof of conception necessary Joint inventorship – all must have contributed to the conception Attorney determines inventorship before application is filed Good faith errors in inventorship can can be corrected

25. Patent Application Filing Practices

26. Introduction The Black Hole or What really happens after you submit an Invention Disclosure Form to the Office of Patent Counsel (OPC)?

27. OTT/OPC Before Discussing at Biweekly meeting review disclosurereview disclosure speak with inventor(s)speak with inventor(s) perform prior art search/noveltyperform prior art search/novelty

28. OTT/OPC Determination to File PROVISIONAL Biweekly meeting to discuss – File – Hold – Let go

29. PROVISIONAL APPLICATION Provisional applications entail –submitting all relevant material to US Patent and Trademark Office Including –fee –form –can submit regular application including claim(s) –gives 1 year in which to further development, funding, licensing, etc.

30. Before 1 year is up –Make determination whether to file a regular patent application –OTT/OPC makes decision –If determine not to file put on hold abandon file a second provisional application

31. BASIS OF DECISION Novelty Stage of Development Commercial Potential Commercial Interest

32. File in PCT If want protection overseas If within 1 year of publication –includes time that provisional application was filed

33. PCT ADVANTAGES –Designating 88 countries including US –A search and preliminary examination is performed before filing in individual countries –Allows time for additional R&D –Allows time to find Licensee

34. US If not filing PCT, then file US only If filed PCT, can enter US at any time up to 30 months after filing

35. PUBLICATION Both PCT and US published for public to see after 18 months

36. PATENT TERM 20 years from date of filing (unless before 1995) –If PRV filed have 1 extra year (US) Takes an average of 3 years to obtain a patent

37. PATENT RIGHTS Allows you to exclude others from making, using or selling

38. SPECIFICATION Tells best way to make the invention Without undue experimentation

39. CLAIMS Most important part of application Define the invention Are what are looked to for infringement

40. OPC FACTS Invention Disclosures Received –135 from 1/00 to 1/01 –23 from 1/01 until 3/01 Applications filed 148 applications from 1/00 to 1/01 –30 applications from 1/01 to 3/01 –Provisional applications filed 112 provisional applications from 1/00 to 1/01 15 provisional applications from 1/01 to 3/01 –Regular applications filed 16 regular applications from 1/00 to 1/01 1 regular application from 1/01 to 3/01 Patents issued –8 in 2000 –2 so far in 2001