Posts Tagged: "reduction to practice"

Inventorship 101: Who are Inventors and Joint Inventors?

Inventorship is one of the most fundamental concepts in patent law. Of course, fundamental does not mean easy or uncomplicated. Patents are granted to inventors, which is easy enough to say but not always as informative as the patent laws presume it to be. In fact, pretty much everyone comes to patent law for the first time with an erroneous…

Inventing 101: Protecting Your Invention When You Need Help

Once you get that first provisional patent application filed you are ready to approach others for assistance with your invention. You have a measure of protection, but never forget you have no exclusive rights until the patent ultimately issues. You should also still get a confidentiality agreement signed by anyone who provides assistance to you. While the clock in the US is ticking to file the nonprovisional, the real important significance of confidentiality agreements after a provisional filing is so that those who assist you will not run off with your invention on their own. With this in mind, it is ABSOLUTELY CRITICAL that you get an assignment of rights with respect to any protectable aspects provided by those giving you assistance.

Every invention starts with an idea

The truth is you cannot patent or protect an idea or a concept. However, it is also an undeniable truth that all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection. Said another way, you simply cannot patent an idea or concept. Similarly, you cannot copyright or trademark an idea or concept. So what do you do when you have an idea? How much is required in order to have an invention?

Inventing 101: Protecting Your Invention When You Need Help

So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. This is because in order to file a patent application you do not have to have ever made the invention or used it, you just need to be able to explain to others how to make and use the invention. So proofs on paper associated with written text explaining the particulars is enough to satisfy the patentability requirements in the United States. So in many, if not most, cases inventors have an invention capable of obtaining protection far earlier than they likely expect.

Change? Derviation May Feel a Lot Like Interference Practice

How this will philosophically change things remains unclear because the America Invents Act requires that the petition filed to institute a derivation proceeding demonstrate that the claimed invention in the subject application or patent was derived from an inventor named in the petitioner’s application without authorization. The Patent Office has also recognized the similarity between derivation proceedings and interference practice, saying: “Petitions to institute derivation proceedings, while distinct from interference practice, raise similar issues to those that may be raised in interferences in a motion for judgment on priority of invention. Currently, motions for judgment on priority of invention, including issues such as conception, corroboration…” See 77 Fed. Reg. 7035 (10 February 2012).