Article on Stanford University’s Office of Technology Licensing (OTL) Patent Web Page

New Jersey Law Journal
The Art of Determining Inventorship
By Daniel A. Scola Jr.

The Patent
Not all Stanford inventions are patented (see The Patent Approach of Stanford’s OTL) even if they are licensed. For example, it is not usually necessary to file a patent for biological materials when the cell line producing the biological material is controlled by the researcher. In this case, the license agreement simply forbids transfer of the material to any other parties and requires its return or destruction should the license be terminated.

Other non-patented technologies we license include software that is under copyright, as well as emblematic ware carrying Stanford logos and trademarked symbols for use on products such as t-shirts and baseball caps.

A patent is intended to publicly disclose the best mode of practicing an invention and, in particular, to point out the features that distinguish the invention from prior art. The patent includes drawings, if appropriate; and a specification that is typically broken into several distinct sections, including: the field of the invention, the background, a brief description of the drawings, a disclosure of the invention, a description of the invention, an explanation of the industrial applicability; and at least one claim.

The field of the invention briefly describes the general field of the invention. A sentence or two is sufficient to aid the Patent Office in assigning the patent application to an Examiner and in classifying the resulting patent.

The background section describes the work done in the past and what has prompted the inventor to pursue this invention. This information is referred to as prior art; inventors have an absolute duty to disclose all relevant prior art. The background section typically develops the progression of work and sets forth the shortcomings of the prior art. It is therefore important for the inventor to include all the prior art and to include a description of the shortcomings and differences between each of the prior art references and the invention in this section. Typical sources of prior art include journal articles, published conference proceedings, issued patents, and other printed materials.

The drawings are provided to aid in understanding the invention. Where drawings do not aid understanding or are impractical, they are not included; but, nearly all inventions will have a drawing of some sort. Graphs and tables may also be included in this section.

The brief description of the drawings merely identifies the view shown in each figure.

The disclosure of the invention sets forth in broad terms what the inventor considers to be the invention and what advantages are gained by the invention. Since it must be written broadly, it typically does not include all the intricate details of the invention’s operation. In fact, in most cases, it merely paraphrases the broadest claim.

The summary of the invention sets forth the theory on which the invention rests and the intricate details of at least one way (and sometimes several ways) the invention can be implemented. This description must be detailed enough for someone who is skilled in the art to reconstruct the invention and must include a description of the best way, in the inventor’s view, the invention can be implemented. Each implementation is called an embodiment and the best one is the preferred embodiment of the invention.

The industrial applicability section describes the applications in which industry will likely use the invention.

The claims circumscribe the legal bounds of the invention and are generally written using specialized terms. The claims describe the essential elements of an invention, first as broadly as possible and subsequently, more narrowly. It is generally easier to obtain a patent with narrow claims but, if too narrow, others can invent around the patented invention. In order to determine whether or not a product comes within the scope of a patent, one compares the product with each element of the claim; if the product is described by all the elements of the claim, then the product will come within the scope of that claim. For instance, a claim of “a vehicle with two or more wheels” covers bicycles, tricycles, cars, motorcycles etc., but not unicycles.

Patent prosecution is essentially a debate with the Patent Office about the breadth or narrowness of the claims, i.e., the scope of the invention.

Patentability
Licensable inventions may or may not be patentable. To obtain a U.S. patent for an invention, the invention must be:

1. novel,
2. useful, and
3. non-obvious to one skilled in the art.

These criteria are examined in light of “the prior art.” One can do a prior art search before disclosing an invention or before filing a patent application. (Prior art search information.)

Novel
To be considered novel, an invention must be the inventor’s original work. In addition, the inventor must file a patent application within one year of:

1. publication (i.e., any unrestricted written description of the invention) anywhere in the world;
2. public use in the U.S.; or
3. an offer for sale in the U.S.

While the United States grants this one year “grace period” to file after first public disclosure, most foreign countries have no grace period. In these countries, a patent will not be granted if the invention was known publicly or disclosed in a publication even one day before the patent application filing date. In patent law, the word “publication” is interpreted much more broadly than when used in the typical research community (i.e., in a journal); if you have a question about whether or not a written or oral disclosure of any kind is a publication, please contact OTL.

For more information about IP and nontraditional publications, please see the Nature Biotechnology article “Nontraditional Publications and Their Effect on Patentable Inventions and UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT11.htm.”

Useful
An invention will be considered useful if it has some qualitative benefit, i.e., the patent application must specify a demonstrable utility for the invention.

Non-obviousness
A patentable invention must be “non-obvious” to someone of “ordinary skill in the art.” This imaginary person “of ordinary skill in the art” does not necessarily include recognized experts in the field; rather it is a hypothetical reference to someone knowledgeable in the field who can understand the invention and has access to the relevant prior art. Because of the abstract quality of this requirement, it is sometimes difficult to predict with certainty whether the patent examiner will find the invention non-obvious.

“Non-obviousness” describes the concept of “unexpected results.” An invention can be “non-obvious” if it is a combination of old elements in a new way to produce a new result. Similarly, an invention can be considered “non-obvious” if others have tried to achieve the invention and failed, or if others have been “teaching away from” the invention. Some situations will require affidavits from experts in the field stating the invention is not obvious to one skilled in the art.

Inventorship

1. An inventor is a person who conceives of an original and non-obvious idea which can be described clearly — the invention.
2. The patent application claims determine who is and who is not an inventor. The claims define the invention from a legal viewpoint, and therefore, should be used as guides in determining inventorship.
3. A person who contributed a basic idea that resulted in the development of the invention as it is claimed in the patent application is considered an inventor. This may or may not include people who actually made a physical embodiment of the invention; however, an inventor must have contributed an essential element which developed into one of the embodiments as well.
4. A person who contributed only labor and/or the supervision of routine techniques, but who did not contribute to the idea – the concept of one of the embodiments of the claimed invention – is not considered an inventor.
5. For example, a routine translation of someone else’s idea into physical reality by a technician does not make the technician an inventor.
6. A person who contributed something in the way of an extraneous idea while the invention was being developed, but the idea did not contribute directly to the claimed invention is not considered an inventor. It does not matter how brilliant or helpful the idea was, if it is not directed to the invention as it is being claimed, the person is not an inventor.

Important Note :
Do not confuse inventorship with authorship on a scientific publication. The courts have specifically held that authorship and inventorship have different criteria and are not equivalent.

Article:  The Art of Determining Inventorship

reprinted the with permission of Hoffmann & Baron, LLP