1. INVENTORSHIP
NAPP® 2009
The Nuts & Bolts of
Patent Prosecution Practice
July 18, 2009
Presented by:
Stan Antolin
Smith Moore Leatherwood LLP
300 N. Greene Street, Suite 1400
Greensboro, NC 27401
T: 336-378-5200
F: 336-378-5400
© 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.

2. Special Thanks to . . .
Sharon J. Adams, Esq.
for providing the materials that served as the
basis of this presentation.

3. Applicant as Inventor
“The requirement that the applicant for a patent be the
inventor is a characteristic of U.S. patent law not
generally shared by other countries.”
MPEP 2137.01

4. In U.S. – Must Have Correct Inventors
In Patent Application –
• 35 USC 102:
“A person shall be entitled to a patent unless –
(f) he did not himself invent the subject matter
sought to be patented…”

5. In U.S. – Must Have Correct Inventors
In an Issued Patent –
•35 USC 256
Whenever through error a person is named in an
issued patent as the inventor, or through error an
inventor is not named in an issued patent and such
error arose without any deceptive intention on his
part, the Director may, on application of all the
parties and assignees, with proof of the facts and
such other requirements as may be imposed, issue
a certificate correcting such error.

6. In U.S. – Must Have Correct Inventors
In an Issued Patent –
•35 USC 256
The error of omitting inventors or naming persons
who are not inventors shall not invalidate the patent
in which such error occurred if it can be corrected as
provided in this section.

7. Inventorship Must Be Correct For
Infringement Lawsuit
“An action for
infringement must join as
plaintiffs all co-owners.”
Ethicon, Inc. V. United
States Surgical Corp.,
135 F.3d 1456, 1467
(Fed. Cir. 1998)

8. Inventor Interview
1. Assessing the client.
2. Who is the inventor?
3. Who is the owner?
4. What is the invention?

9. Assessing The Client
An art form;
If you think it’s not going to work
out, it probably won’t;
Free consultation?

10. Assessing The Client
Why is client seeking invention?
License to others;
Manufacture and produce;
Already in market;
Defensive patent;
Vanity patent.

11. Assessing The Client
Conflicts check
Other clients;
Technology.

12. What Is The Invention?
Only take cases in areas
where you are technologically competent.

13. What Is The Invention?
Practitioner must understand the invention.

14. What Is The Invention?
Bar dates!
Possible imminent publications?
Tape record interview?
Take notes.
Make drawings.

15. Who Is The Owner?
Inventors automatically own
patent.
However, employers may have
rights to the invention through
employment agreement, or by
operation of law.

16. Who Is An Inventor?
Conception
Maintain Intellectual Dominion
Reduction To Practice
Joint Inventors
Derivation

17. Conception
The threshold question in determining inventorship is who
conceived the invention.
Unless a person contributes to the conception of the
invention he [or she] is not an inventor. “One must
contribute to the conception to be an inventor.”
In re Hardee, 223 USPQ 112, 1123 (Comm’r Pat. 1994).
MPEP 2137.01

18. Conception
Biology/Chemistry
Conception of genes, chemical
compounds or new virus (FIV)
only occurs only when virus is
isolated, or the compound is
reduced to practice.
University of California v.
Synbiotics Corp., 849 F.Supp.
40, 742 (S.D. Calif. 1994)

19. Maintain Intellectual Dominion
Inventor may consider and adopt ideas and materials from
many sources, such as employee or hired consultant, as
long as inventor maintains intellectual domination of the
work of making the invention down to the successful
testing.
Morse v. Porter, 155 USPQ 280, 283
(Bd. Pat. Inter. 1965).

20. Maintain Intellectual Dominion
Adoption of the ideas and materials from another can
become a derivation.
New England Braiding Co. V. A. W. Chesterson Co.,
970 F.2d 878, 883, (Fed. Cir. 1991).

21. Reduction To Practice
There is no requirement that the inventor be the one to
reduce the invention to practice so long as the reduction to
practice was done on the inventor’s behalf.
In re DeBaun,687 F.2d 459, 463 (CCPA 1982).

22. Reduction To Practice
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.
Fritsch v. Lin, 21 USPQ2d 1737, 1739
(Bd. Pat. App. & Inter. 1991).

23. Joint Inventorship
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 UCS 116; MPEP 2130.01; 37 CFR 1.45(b).

24. Joint Inventorship
Must have some “quantum of collaboration or connection.”
Kimberly-Clark Corp., v. Procter & Gamble Distrib. Co.,
973 F.2d 911, 916-17 23 USPQ2d 1921, 1925-26
(Fed. Cir. 1992).

25. Joint Inventorship
A co-inventor need not make a contribution to every claim
of the patent. A contribution to one claim is enough.
MPEP 2137.01.
“For the conception of a joint invention, each of the joint
inventors need not ‘make the same type or amount of
contribution’ to the invention.” Ethicon, 135.F.3d 1456,
1460 (Fed. Cir. 1998) (quoting 35 U.S.C. §116).

26. Joint Inventorship
Inventor must do more than
suggest desired result or follow the
instructions of another.

27. Joint Inventorship
“Conception is the touchstone to determining inventorship.”
Burroughs Wellcome Co. V. Barr Laboratories, Inc., 40
F.3d 1233, 1227 (Fed. Cir. 1994)
The “critical question for joint conception is who conceived,
as that term is used in the patent law, the subject matter of
the claims at issue.” Ethicon, 135 F.3d at 1460.

28. Joint Inventorship
Question 1
Is there joint inventorship when one person conceives of
the idea and another one reduces it to practice?

29. Joint Inventorship
Question 2
If a person suggests a desired result, but not the means
to accomplish the result, is that person an inventor?

30. Joint Inventorship
“It is one thing to
suggest that a better
mousetrap ought to be
built; it is another thing
to build it.”
Buildex Inc. V. Kason
Industries, Inc., 665
F.Supp. 1021, 1025
(E.D. N.Y. 1987)

31. Joint Inventorship
Question 3
Walters came up with improvement to his patent.
Discussed the improvement with Sewall and Sewall
helped in reducing to practice, and in doing so,
developed the “best mode” identified in the patent.
Is Sewall an inventor?

32. Joint Inventorship
Question 4
– 55 total claims.
Choi claimed to have invented 2. Claim 33 was for
surgical trocar with blunt probe passing through hole in
blade. Yoon conceived of blunt probe. Choi conceived
of locating blunt probe in shaft and allowing it to pass
through hole in blade.
Is Choi an inventor?

33. Joint Inventorship
Question 5
Drs. R and S were trying to develop a balloon
angioplasty medical device. They were having problems
with the balloon material and consulted with Mr. H, who
suggested a material that they used in the patent. The
material was known to those skilled in the art.
Is Mr. H an inventor?

34. Joint Inventorship
Question 6
Inventor P filed app for intraocular lenses to replace
human eye lenses in cataract surgery. He subsequently
met with L, who suggested a single piece of snag
resistant plastic. P filed a C-I-P claiming the snag
resistant plastic which resulted in a patent..
Is L an inventor?

35. Joint Inventorship
Joint inventorship, each can develop and exploit without
accounting to the other. 35 USC262
In the absence of any agreement to the contrary, each of
the joint owners of a patent may make, use, offer to sell, or
sell the patented invention within the United States, without
the consent of an without accounting to the other owners.

36. Derivation
Where it can be shown that an applicant “derived” an
invention from another, a rejection under 102(f) is proper.
Ex parte Kusko, 215 USPQ 972, 974 (Bd. App.
1981)

37. Derivation
Derivation requires complete conception by another and
communication of that conception by any means to the
party charged with derivation prior to any date on which it
can be shown that the one charged with derivation
possessed knowledge of the invention.
Kilbey v. Thiele, 199 USPQ 290 294 (Bd. Pat. Inter.
1978)
MPEP 2137

38. Identifying Inventors
Contributions of named inventors should be evaluated after
claims defining the invention are finalized.
Inventorship may vary from claim to claim. Match persons
to claim limitations.

39. Identifying Inventors
Claim amendment may affect
inventorship.
Try to get all team members
to agree who are the
inventors.
Need not have equal
contributions.

40. Identifying The Inventor For The PTO
In a non-provisional application the inventorship is as set
forth in the oath or declaration.
• 37 CFR 1.41(a)(1)
• MPEP 605
In a provisional application the inventorship is as set forth
in the cover sheet.
• 37 CFR 1.41(a)(2)
• MPEP 605

41. The Oath Or Declaration Must List Correct
Inventors
Neither more nor less than all of the inventors must make
the required oath or declaration.
37 CFR 1.45(a)

42. Who Can File?
The “Applicant”.
• MPEP 605
• 37 CFR 1.41(b)

43. An Applicant Is
Inventor – 35 USC 116
Assignee – 35 USC 118

44. Assignee: 35 USC 261
Subject to the provisions of this title, patents shall have the
attributes of personal property.
Applications for patents, patents, or any interest therein,
shall be assignable in law by an instrument in writing. The
applicant, patentee, or his assigns or legal representatives
may in like manner grant and convey an exclusive right
under his application for patent, or patents, to the whole or
any specified part of the United States.

45. Assignee: 35 USC 261
An assignment, grant or conveyance shall be void as
against any subsequent purchaser or mortgagee for a
valuable consideration, without notice, unless it is recorded
in the Patent and Trademark Office within three months
from its date or prior to the date of such subsequent
purchase or mortgage.

46. Assignee As Inventor
“Whenever an inventor refuses to execute an application
for patent, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or
agreed in writing to assign the invention or who otherwise
shows sufficient proprietary interest in the matter justifying
the action, may make application for patent…”
35 U.S.C. § 118.

47. Joint Inventors: Not All Available
“If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the
application may be made by the other inventor on behalf of
himself and the omitted inventor.”
35 U.S.C. § 116.

48. Correction Of Inventorship
By Amendment (37 CFR 1.48)
Through Courts
Through Reissue & Re-Exam
Through Interference

49. Correction of Inventorship
By Amendment (37 CFR 1.48)
“Whenever through error a person is named in an
application for patent as the inventor, or through error an
inventor is not named in an application, and such error
arose without any deceptive intention on his part, the
Director may permit the application to be amended
accordingly, under such terms as he prescribes.”
35 U.S.C. § 116.

50. Correction of Inventorship
By Amendment (37 CFR 1.48)
§ 1.48 Correction of inventorship in a
patent application, other than a
reissue application, pursuant to 35
U.S.C. §116.

51. Correction of Inventorship
By Amendment (37 CFR 1.48)
(a) Non-provisional application after oath/declaration
filed. If the inventive entity is set forth in error in an
executed §1.63 oath or declaration in a non-
provisional application, and such error arose without
any deceptive intention on the part of the person
named as an inventor in error or on the part of the
person who through error was not named as an
inventor, the inventorship of the non-provisional
application may be amended to name only the
actual inventor or inventors.

52. Correction of Inventorship
By Amendment (37 CFR 1.48)
Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth
the desired inventorship change;
(2) A statement from each person being added as an
inventor and from each person being deleted as an
inventor that the error in inventorship occurred
without deceptive intention on his or her part;

53. Correction of Inventorship
By Amendment (37 CFR 1.48)
Amendment of the inventorship requires:
(3) An oath or declaration by the actual inventor or
inventors;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed, the written
consent of the assignee.

54. Correction Of Invention Through Courts
If error in inventorship is made without deceptive intent, the
court before which such matter is called in question may
order correction of the patent on notice and hearing of all
parties concerned.
35 USC 256

55. Correction Of Invention Through Courts
Deceptive intent in failing to join an inventor would not
permit correction of inventorship under section 256 and
would invalidate the patent.
MCV, Inc. V. King-Seeley Thermos Co., 870 F.2d 1568,
1571 (Fed. Cir. 1988)

56. Correction of Inventorship
Reissue
The correction of misjoinder of inventors has been held to
be a ground for reissue.
MPEP 1412.04

57. Correction Of Invention
Re-exam
Where the inventorship of a patent being reexamined is to
be corrected, a petition for correction of inventorship which
complies with 37 CFR 1.324 must be submitted during the
prosecution of the reexamination proceeding.
MPEP 2250.02 (No deceptive intent)

58. Correction of Inventorship
Interference
erstwhile pals & “their” invention
• file identical application and claims
• list correct inventor(s)
– while pending or
– within one year of the patent issue
• request interference with regard to the original
a.k.a. “originality case” - determines who made the invention
instead of who made the invention first. Sewall v. Walters, 21 F.3d
411, 30 USPQ2d 1356 (Fed. Cir. 1994) (Rich, J.).

59. Standing
Inventors Have Standing To Sue
to Correct Inventorship,
Even If They Have
No Ownership Interest In Patent

60. Standing
We conclude that an expectation of ownership of a patent
is not a prerequisite for a putative inventor to possess
standing to sue to correct inventorship under § 256. The
statute imposes no requirement of potential ownership in
the patent on those seeking to invoke it. We have
previously interpreted § 256 broadly as a “savings
provision” to prevent patent rights from being extinguished
simply because the inventors are not correctly listed.
Pannu v. Lolab Corp., 155 F.3d 1344, 1349, 47 USPQ 2d
1657, 1662 (Fed. Cir. 1998).

61. Standing
The same considerations apply here. Chou should have
the right to assert her interest, both for her own benefit and
in the public interest of assuring correct inventorship
designations on patents. The interests of both inventors
and the public are thus served by a broad interpretation of
the statute.
Chou v. University of Chicago, 254 F.3d 1347 (Fed. Cir
2001).

62. Thank you
Stan Antolin
stan.antolin@smithmoorelaw.com
T: 336-378-5516
F: 336-433-7591
© 2009 Smith Moore Leatherwood LLP. ALL RIGHTS RESERVED.