Issues related to inventorship and ownership of patents are not new.  Such issues have arisen since the inception of the U.S. Patent System in 1790.  Such issues arise because the 1790 Patent Act and every revision of the Patent Laws since have recognized inventions can be created by joint inventors.

The current patent statutes are of little assistance in resolving such issues.  Without defining “inventor”, the patent statutes merely provide:  “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 U.S.C. § 116.

Court cases interpreting this statute have tried to define “joint inventor”:  “To be a joint inventor, one must make some original contribution to the inventive thought and the final solution of the problem.  See Maxwell v. Kmart Corporation 880 F.Supp. 1323, 1334 (D. Minn 1995).  One does not become a joint inventor, however, merely by assisting the actual inventor after the inventive concept is conceived.”

Given these rules, anyone making some original contribution to the conception of a single element of a single claim of a patent is a joint inventor and must be named on the patent.

So what rights might such a person own in the patent?  Patents have the attributes of personal property.  35 U.S.C. § 261.  “In the absence of an assignment of rights or other agreement to the contrary, each joint inventor (joint owner) may make, use, offer to sell, or sell the patented invention within the United States or import the patented invention into the United States without the consent of and without accounting to the other owners.  Further, each joint inventor’s rights can be sold or licensed without the consent of, and without accounting to, the other owners.  The value of a patent is a function of exclusivity of rights.  When others hold comparable rights, the value of the rights are diminished.

All of these issues can easily be resolved and the value of the patent rights preserved by agreement.  Resolving these issues by agreement is typically more difficult and more expensive after the invention has been completed, particular if the invention is a commercial success.  Companies and individual inventors are well advised to consider these issues and have agreements covering patent ownership in place before they engage employees and others to assist with efforts leading to patentable inventions.  The absence of such agreements can lead to confusion, expensive litigation or competitors holding a clear right to use of the patent invention.

We would be happy to assist you with ensuring the investments you make leading to the invention of patentable subject matter are adequately secured and protected.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Effective October 2, 2008, the United States Patent and Trademark Office will adjust certain patent fees to reflect fluctuations in the Consumer Price Index (CPI).  Most patent fees will be increased by 5% from the previous fee schedule.  Any fee amount paid on or after October 2, 2008 is subject to the new fee schedule. 

Some fees of note: the utility issuance fee has increased from $1,440 to $1,510; the four-year maintenance fee has increased from $930 to $980; and the utility filing fee has increased from $1,030 to $1,090.  However, independent inventors, small business concerns and non-profit organization will still be allowed the 50% reduction in fees for a small entity. 

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com 

A patent owner may put the public on notice that a product is covered by a patent by placing the applicable patent number(s) on the product or packaging in which the product is sold.  Doing so has the benefit of causing infringement damages to flow from the time that the infringement begins rather than from the time that the patent owner detects the infringement and provides the infringer with actual notice of the existence of the patent by letter or otherwise.  However, a recent case dealing with false patent marking makes it wise for a patent owner to remove such patent notices from its products once the patent has expired or can no longer be enforced.

In Pequignot v. Solo Cup Company, 540 FSupp 2d 649, the U.S. District Court in Virginia interpreted the statutory provision of 35 U.S.C. §292(a) which reads:

“Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word ‘patent’ or any word or number importing the same is patented for the purpose of deceiving the public … Shall be fined not more than $500.00 for every such offense.”

as requiring that patent markings be removed once the product is no longer covered by the patent or patents identified on the product.  It remains to be seen whether any fine will be imposed under that statute.  To qualify for payment, the plaintiff must establish that the defendant (Solo Cup Company) continued to use the patent markings on its products following patent expiration with the specific intent of “deceiving the public”.  If the plaintiff is able to show that Solo could not have had a “reasonable belief” that its cup lids were covered by the listed patents, the penalty of $500.00 per offense could be imposed.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com

As the 2008 presidential race continues to escalate, not much attention will be paid in the popular press to the candidates’ positions on patent law.  However, much attention will be paid to the issues of energy independence and global warming, given that both candidates have declared a need to address those issues.

In particular, John McCain has proposed presenting a $300 million monetary prize to whoever can invent a battery package far superior to the commercially available plug-in hybrids or electric cars in terms of size, power and cost.  Dennis Crouch at Patently Obvious has an insightful post comparing monetary prizes and patents as incentives to invent.

A question worth asking, however, is whether either tangible prizes such as monetary rewards or patent rights are the proper incentives for the development of renewable energy. Perhaps academic research and inquiry is the primary motive for innovation in the field of renewable energy.  One scholar has suggested:

 [T]he individuals conversant in the technical vernacular of renewable energy technology have a synergistic relationship that builds on individual contribution. Exchange of ideas relating to renewable energy technology is also already well-adapted to highly efficient modes of communication via internet portals and intranets. Contributors to the field of high technologies, such as software and renewable energy, value most the recognition they receive in the form of peer praise, Nobel prizes, and speaking engagements; monetary rewards are relatively less valuable.

Of course, renewable energy technologies will require a great deal of capital investment in order to make such technologies useable in both the short and long-term.  What makes software amenable to an open-source model is software often requires significantly less investment for research and development.  While the automation of the innovation process has reduced the costs of prototyping and testing of new innovations, renewable energy innovations still require significant investment in research and development.  Investors will want a return on their investments if they are going to expend the necessary capital outlays to develop alternative energy incentives.  Therefore, while the scientists may thrive in an open-source model for renewable energy, some tangible incentive, such as patent rights, will be necessary to ensure continued innovation.

 Peter Nikolai    (612) 392-7311    Peter.Nikolai@nm-iplaw.com