new york washington, dc silicon valley may 8, 2010 charles weiss kenyon & kenyon llp (212)...
TRANSCRIPT
New York Washington, DC Silicon Valley www.kenyon.com
May 8, 2010
Charles WeissKenyon & Kenyon LLP(212) [email protected]
Southern Area Entrepreneur's Day
Inventorship, ownership, and common patent mistakes
Charles Weiss
To be an inventor, an individual must have contributed to the conception (the idea) of the claimed invention.
An inventor need not personally construct or test the invention.
Inventorship of Patents
Charles Weiss
Joint inventorship only requires some degree of connection or collaboration between inventors.
Joint inventors need not be at the same location.
The relative contributions do not have to be equal or similar.
Inventorship of Patents
Charles Weiss
Innocent errors in naming inventors may be corrected. Inventors can be added or removed.
Patents that issue with incorrect inventorship may be found invalid.
Problems with inventorship arise when people who worked on a project feel cut out or slighted, or are simply after money.
Solution? Assignments from everyone involved.
Improper Inventorship
Charles Weiss
In the U.S., the presumptive owner of a patent is the inventor, not the inventor’s employer.
This can be adjusted by agreement between the employee/inventor and the employer.
Ownership of Patents
Charles Weiss
Employees who are or may be engaged in research or development – and ideally all employees – should sign a blanket assignment of inventions as a condition of employment.
The possibility of inventions by persons who are affiliated with the company but not actual employees – such as directors or consultants – must also be considered.
Some states have laws that govern such agreements, so check on this before using a “standard” form.
Ownership of Patents
Charles Weiss
Contract research organizations vary in their willingness to assign inventions.
Universities are commonly prohibited by law or policy from assigning patents, making a license necessary instead.
Some persons (especially university personnel) may have existing obligations to assign inventions to others. Getting an assignment from a person who has already assigned to someone else leaves you with nothing.
Ownership of Patents
Charles Weiss
Assignments of patents must be in writing.
Common terms include agreement by the assignor/seller to cooperate with the assignee/purchaser in prosecution and enforcement.
Ask exactly what is being assigned, e.g., are rights to corresponding ex-U.S. applications included? How about rights to continuations, modifications, improvements?
Be careful when changing corporate form or organization.
Get tax advice before assigning the founder’s patents to the company.
Transfer of Ownership
Charles Weiss
Failure to Recognize Patentable Subject Matter
Improvements of existing technology may be patentable, even if the improvement seems small.
New uses of existing compounds or techniques may be patentable, even though the compound or technique is itself old.
Scientific discoveries or elucidation of a mechanism of action are not patentable, but with proper claiming may support a valid and valuable patent.
Charles Weiss
Premature Disclosure
Disclosure, sale, publication, or public use prior to filing may destroy patent rights.
There is a one-year grace period in the U.S., but no grace period in most other countries.
Best practice is to file before making any disclosure.
Charles Weiss
Misuse of Provisional Applications
A provisional application gets you a filing date, but is only as good as its disclosure.
A regular application that claims priority to a provisional application gets the provisional’s date only for what is properly disclosed in the provisional.
Don’t think of provisionals as cheap, quick, or easy ways to lock in a date.
Charles Weiss
Belief that Having a Patent Gives the Owner the Right to Practice its Invention
A patent gives its owner the right to exclude others from practicing the invention, not the right to practice the invention itself.
You can have a patent but still infringe other people’s patents.
Others can have their own patents but still infringe your patent.
Charles Weiss
Playing Patent Lawyer Because You Understand the Technology
Patents are first about law and only second about technology.
The true effect or scope of a patent may be quite different from what a scientist or engineer in the field would expect.
Avoid commenting in writing – including emails – on the validity, scope, or meaning of your own patents or of other people’s patents. If the communication is not with a lawyer, it will likely be discoverable in any litigation.
New York Washington, DC Silicon Valley www.kenyon.com
Charles WeissKenyon & Kenyon LLP
1 BroadwayNew York, NY 10004
(212) [email protected]