Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 76

In the United States, patent applications must be originally filed setting forth the names of the inventor, or inventors if there are more than one, or in the name of a business entity to which the inventor or inventors are obligated to assign their invention, possibly pursuant to an employment contract or other agreement. The application, upon filing, can be immediately filed in the name of the company for whom the inventors work. Also, if the inventors have decided prior to filing the application that they desire to assign the rights either equitably among each inventor, or to other individuals, the application may be filed in the name of each inventor or such other individuals or company. However, it is important to know that, in the United States, the true inventors must initially be identified in a patent application data sheet that accompanies filing of the patent application. These inventors must be the true inventors of the subject matter claimed to be novel and non‐obvious in the patent application. A signed assignment document may be filed for recording in the USPTO along with the initial patent application, or later, in which document the inventors assign their rights over to their employers or others.

Regardless of assignment, it is imperative in the United States that the actual inventor or inventors be named in the application documents. The patent laws do not allow those to be named as inventors who did not contribute to the conception or reduction practice of the invention. In several instances during my years of practice, politics within a business environment have resulted in inventors being named who had nothing to do with the actual conception or reduction to practice of the invention. This should be avoided. After the patent issues, and the owner attempts to enforce the patent against an infringer, the acts of invention by the named inventors will be part of the discovery and trial testimony in the case. If it is ultimately determined that the individuals who are named are not the inventors, the patent’s validity and/or enforceability could be jeopardized. Therefore, when working with a patent attorney, the inventors must ensure that all of the proper inventors be named, and also be sure that those who are not inventors do not appear on the application as inventors.

To determine the identity of actual inventors on a project that involves several people, I have applied a simple test, which you may also find useful. The addition of technical features to an invention usually does not qualify as contributing to the “invention.” Thus, one who can take a sketch appearing on a piece of paper, and create a workable and valuable product, composition, or other item from the sketch, is normally not named as an inventor. By contrast, an inventor starts with a blank piece of paper and places the sketch on the sheet, which the technician eventually works from. Therefore, in determining who are to be named as inventors in a patent application, it is important to determine who started with the blank sheet of paper, and who acted only in a purely technical capacity and carried out the invention that was actually conceived and reduced to practice by others. In complying with this requirement of the patent law, management should understand that there is no room for politics in the naming of inventors in patent applications.