​​Patently Strategic - Patent Strategy for Startups

Inventorship: Who should be listed as an inventor for a patent?

November 23, 2021 Aurora Patent Consulting | Ashley Sloat, Ph.D. Season 1 Episode 8
Inventorship: Who should be listed as an inventor for a patent?
​​Patently Strategic - Patent Strategy for Startups
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​​Patently Strategic - Patent Strategy for Startups
Inventorship: Who should be listed as an inventor for a patent?
Nov 23, 2021 Season 1 Episode 8
Aurora Patent Consulting | Ashley Sloat, Ph.D.

In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – officially named as an inventor?

In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.

In this episode, Daniel Wright, Partnership Manager and Patent Strategist here​​ at Aurora, will lead a deep dive into the origins of inventorship, break down who is and isn’t eligible for inclusion as an inventor, and explain how improper inventorship could result in revoked patent rights.

Daniel is joined today by:
* David Jackrel, President of Jackrel Consulting 
* David Cohen, Principal at Cohen Sciences.

***

** Resources **

* Show notes: https://www.aurorapatents.com/blog/new-podcast-inventorship

** Follow Aurora Consulting **

*
Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/ 

And as always, thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

Show Notes Transcript Chapter Markers

In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – officially named as an inventor?

In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.

In this episode, Daniel Wright, Partnership Manager and Patent Strategist here​​ at Aurora, will lead a deep dive into the origins of inventorship, break down who is and isn’t eligible for inclusion as an inventor, and explain how improper inventorship could result in revoked patent rights.

Daniel is joined today by:
* David Jackrel, President of Jackrel Consulting 
* David Cohen, Principal at Cohen Sciences.

***

** Resources **

* Show notes: https://www.aurorapatents.com/blog/new-podcast-inventorship

** Follow Aurora Consulting **

*
Home: https://www.aurorapatents.com/

* Twitter: https://twitter.com/AuroraPatents

* LinkedIn: https://www.linkedin.com/company/aurora-cg/

* Facebook: https://www.facebook.com/aurorapatents/

* Instagram: https://www.instagram.com/aurorapatents/ 

And as always, thanks for listening! 

---
Note: The contents of this podcast do not constitute legal advice.

WEBVTT

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Good day and welcome to the Patently Strategic Podcast, where we discuss all things at

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the intersection of business, technology and patents.

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This podcast is a monthly discussion amongst experts in the field of patenting.

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It is for inventors, founders and IP professionals like established or

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aspiring. And in this month's episode we're going to tackle the often misunderstood

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concept of inventorship. We can't think of a better time to bite into

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this topic than when going into Thanksgiving weekend, because aside from a delightful

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conversation with the inlaws about politics over some dry Turkey,

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few things can get more contentious and be full of more misconceptions

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than discussions of inventorship in the US, especially patents

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are granted to inventors more often than not, that's more than one

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person and the ideas themselves are fluid concepts that often evolve through

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many handoffs, from initial conception through implementation and sometimes

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even throughout patent prosecution. But how do we determine who all should

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and is legally required to be officially named as an inventor

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in the constitutionally expressed interest of protecting inventors and

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the conception of their ideas? Failure to include the right people can be

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a death sentence for a patent and grounds for invalidity after

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he passes the stuffing. Daniel Wright, partnership manager

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and patent strategist here in Aurora, will lead a deep dive into the origins of

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inventorship breakdown who is and isn't eligible for

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inclusion as an inventor and explain how improper inventorship

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could lead to more heartburn than Aunt Hilda's Green Bean Casserole.

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Daniel is joined today by two of Aurora's favorite in laws, David Jackrel

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President of Jackrel Consulting, and David Cohen, principal at Cohen

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Sciences. All right, take it away, Dan.

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So, today, though, we're going to be talking about inventorship,

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this is definitely, I think, one of the most client facing

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sides of our practice. Some of the more certainly

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critical, but aspects of application drafting

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and some of the procedures before the patent office. A lot

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of clients will honestly just take your word for it or

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they don't see that section of it.

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But when you get to inventorship, this is then something

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that they directly have to deal with. They have to provide you the

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names of the inventors for an application. And this seems just becomes

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very personal. People like seeing their names on

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important, valuable documents,

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and especially when you get a lot of inventors come out

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of academic institutions, academic backgrounds, where then

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anybody who breathes in the meeting room during group meeting

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gets their name on the academic paper, and we know that that's a

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different standard for patents. And so

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this is the conversation. This is a conversation I find myself having fairly frequently

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with clients when we get to the stage of application drafting

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as well, who actually gets to be named

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on the patent, who gets included, who doesn't get included?

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And sometimes people are maybe

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feel a bit hurt when they realize someone so shouldn't

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actually go on this pattern because everybody wants to be generous of

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certain people who were involved.

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Again, if a lot of people approach like an academic paper,

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however, I will say this. As I was digging more into this topic,

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I ended up finding a little bit different nuance. So there's tacos in

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a different Avenue than where I expected it to

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go when I began. But we will begin,

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though, with one so unique

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to the US, as I'm sure you know, or maybe not

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exactly unique, but particular to the US is that US patents because

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of how the Constitution is phrased are issued specifically to the

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inventors. And so then we have the secondary system of

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assignments and the applicant that's kind of developed a bit with law

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over time to make it more clearly the

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real party of interest, the company that's pursuing the IP

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rights. But still, fundamentally, you have to name the inventors. And it's

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a big deal to get inventorship, right.

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And this is distinct from some other countries where they kind of hand wave.

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They care less about who was the actual one who did the work.

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They care more about who is the judicial

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law abiding entity that is pursuing the

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intellectual property, right that the government's going to grant.

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And then next vendorship is fundamentally related to

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conception. It's like who with regard to the

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invention you actually sat down and conceived of it, put together enough

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of it to make it work so that it is apprehensible.

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But it's understandable to those of the skill, and that particular

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reduction of practice is not fundamentally required.

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And this is the bit that I think really catches a

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lot of inventors clients off guard is that they say,

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okay, well, we have a senior science staff of

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two or three people who worked on this, but we have

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some lab techs, or we have some engineers that we gave them some specs.

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We gave them the head science staff came up with something and they

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gave it to the engineers. And then the engineers went and built it. That was

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really important work. And naturally,

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I think everyone wanting to be a generous, kind person

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wants to include those engineers, but then I always have to kind of

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drop them back and ask for like, well, did those engineers actually

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add any new elements to it?

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Did they change the design?

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And sometimes that can happen in some dependent claims, like maybe

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an inventor had or an engineer came up with

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some variant or did have to tweak something that becomes

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then claimed and therefore promotes them. But many

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times the answer is like, well, we'll know the chief science staff,

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the senior science staff came up with it,

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and they handed it to the engineers or to the lab techs.

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And the lab techs did very valuable work, but they

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never did any of the interpretation, and they never actually tweaked anything.

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Despite that immense value of the engineers

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and the lab techs, they don't get named by the standards

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of US patent law.

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But increasingly, inventions are becoming collaborative

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efforts. If you look at the trends, I don't have the trends with me here,

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but the days of single inventor

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patents is behind us.

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You still get some. But increasingly,

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patents are naming two or more inventors.

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So the CFR has some what sounds fairly obvious

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bits here about joint inventorship, but I keep seeing it come up

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in every bit of case law on inventorship. I see. So I think it's worth

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repeating here that joint inventors need not

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physically work together at the same time, especially now

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in the work from home era. Very seldom now

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are people physically working together at the same time.

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Similar joint inventors need not make the same type

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or amount of contribution. So somebody

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only contributed one element to the invention

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and somebody else came up with the other 99, while the

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one is indeed literally a contribution.

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So therefore he or she will be named.

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And then finally, joint inventors need not contribute

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to every claim did not contribute

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to every claim. To stress this,

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because the invention and this leads us to something

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I've kind of hinted at is that the invention,

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as we know,

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is defined by the claims. The bit that the government cares about,

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the bit that the examiners care about is that

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they're going to look at how your invention is discussed as

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claimed. And so to be a joint inventor, when you've got

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this list of your 20 plus claims or so,

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you don't need to be an inventor on every single claim, as long as you're

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an inventor on one claim that qualifies

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you as a joint inventor. So again, similar to that

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prior point, you don't need to make the same amount

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of contribution as long as you've contributed literally something to the conception

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of the invention you count.

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And so with this, though strict definition, strong relationship

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between the invention as claimed and then

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who's an inventor. This then results that the inventorship

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on the application can change as the claims change.

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And fundamentally, this will most likely occur when you

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have a restriction requirement. So you've got a device

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and a method, or perhaps you've

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got two closely related inventions that you packed together in one

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application, you sent it in, you get a restriction requirement,

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and one inventor strongly worked on the device and

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another inventor, I guess, to be specific,

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one inventor was only to the device and then another inventor was only

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to the method or to the other related device.

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And then you get a restriction requirement and you're required to split

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them out and you split them out evenly such

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that there's only one inventor now on

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this new application or on the current application, and now the other inventor

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is only on the divisional you are required to change

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the inventorship of those applications. No longer.

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Now you've divided out the material along the

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conceived lines, along how they're claimed.

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So inventorship changes now technically, this can occur

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for other types of whenever the claims change.

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Technically, your vendorship could change,

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perhaps for certain rejections 101 or one, one,

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two, you have to drop something or you change something,

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and now someone's contribution gets eliminated,

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you change your claim scope and something gets left out.

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Now they've

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no longer contributed to part of the claims,

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which, as the claims define the invention for that given application,

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then they have not actually contributed to the

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invention. And again, this could happen with prior

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rejections. It's novelty, non obviousness. Perhaps you

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change something that in the language that tweaks what elements

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are included, and maybe you're cutting somebody off. I'll say you're

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very unlikely adding anybody to it in this

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process with how the mechanisms of

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office actions work and similar, I will say very seldom

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do you actually overcome a prior art rejection by removing things.

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Normally, you're adding more detail from your specification, which is

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probably just going to further increase people's contribution to it.

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But technically, I guess it could happen in some weird

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way. But the fundamental point here is that one invents over

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the prior art.

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The standard process of filing for acquiring an issue

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patent is you put together application, you send it in.

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And for every case,

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the examiner is doing a search. The examiner is going

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and looking at what else is out there about this field

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about this technology. And is the invention

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as claimed useful novel not obvious over

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what else is out there? Yeah. Dan, that's a great point.

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Actually, I think you're right. It's kind of rare

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that this kind of situation where you have to amend

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something that changes the inventorship,

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especially in the prior art rejection area. I remember a

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case a couple of years ago where it happened to us, though,

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and we almost

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made a mistake in the Adventures of in the end, because what we had to

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do is bring in sort of a very different limitation to

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get around the prior art. And that limitation was

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like it was it was different and it had a different inventor who had

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contributed to that. And so we got the allowance.

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We were looking at paying the issue fee, and only when we were doing our

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final review, we were like, oh, wait a second change. But the inventor is

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still right because we had been working with the client, we knew their portfolio,

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and we knew that that particular limitation had a different set

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of inventors. So we did catch it. But,

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yeah, it's a great point that you bring up because inventorship is

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really important. It could invalidate a patent if you don't get it

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right. Yeah, I'll be talking about the

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actual legal consequences in a later slide, but yeah, absolutely.

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And we're approaching now

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this bit the fundamental equivocation, because some of the case law I

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stubble on kind of surprised me. So there seems to be an

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equivocation, and I intentionally phrase this a bit cheekily of being an inventor

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versus being an inventor,

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because there's this whole relationship, as you just described between

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this analysis of the prior art,

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there is an analysis of the prior art that is relevant to the issuance

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of any issued patents that must occur.

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And therefore if your adventureship relies upon

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the claims, one would think then that there should be then

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a very strong relationship between conception adventureship

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and prior art. But some case law I'm going

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to go into here actually suggest otherwise. It actually suggests

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that the right to be named on a patent

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application is in a certain way distinct from

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sort of the status of sorts, to say, of being

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a named inventor on an issued patent on the other

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side. And some current case will

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actually suggest that the details of a priority analysis are

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actually somewhat irrelevant for this first fit

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of whether or not you are named as an inventor to begin with.

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And it gets a bit weird. But first I put together a

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simple kind of example here that this does kind

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of make. This does make sense to me. So fictional example here

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about whale hunting. Ishmael and Que Quagg are trying to develop the ultimate whaling

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Harpoon.

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Ishmael he comes up with this

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new grip for holding the Harpoon,

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and Quee quad develops a new spear tip,

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and they put together their patent application and they've got a claim

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that includes both elements. You got a whaling Harpoon with Ishmiles grip

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and Queek legs. Spear tip. They submit that to the USPTO and

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the USPTO determines from their priority analysis. That ishmiles,

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grip is obvious over like a spear fishing product out of a

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base pro shops brochure.

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That part alone would perhaps be seen as

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not patentable over the prior art. But they find that

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Queenquake spear tip is indeed novel and not obvious.

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And so the claim issues the case issues with both

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of those. The claim still reads the spear tip and the grip

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and the case issues with both Ishmael and Quee queue as inventors.

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Now there's no obligation to remove Ishmael

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as an inventor from the patent, even though it

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was Quee Queg's contribution that actually was found to

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be the bit, the novelty, the non obviousness that

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pushed the case to issuance. It was

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a collaborative, as you'll see some of the language from some of the specific case

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law examples that it was still a collaborative effort. They indeed worked together.

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The claim elements are there, even though

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Ishmael's contribution was found to be obvious, it's still

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in the claim. So as long as it is

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still in the claim,

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then indeed, both Ishmael and quietwood are inventors

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now, had this been divided out,

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had this been split up into two different cases, well, then it feels

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kind of weird because we would be in a situation where you split

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it out. An Ishmaels case never gets issued

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because it's obvious, but Queekwegs would

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because it's novel and not obvious. Then the only pattern that

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would end up out of that system would be Quee quakes.

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So that, to me, still seems kind of like an

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odd conflict there. And this just sort of continues.

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So first case law example from 98, Panu versus IELab

17:28.582 --> 17:32.602
Corporation, and the story generally goes like this. So Panu

17:32.686 --> 17:36.450
invents a new lens implant, so literally

17:37.730 --> 17:41.850
replacement lens for your eye that's surgically inserted

17:43.130 --> 17:46.794
into your eyeball. So he invents a new

17:46.832 --> 17:49.230
lens implant and he files for a patent.

17:50.150 --> 17:53.994
And during this process he's already

17:54.032 --> 17:57.618
filed. His rights are secured. He goes and he meets with a man

17:57.644 --> 18:01.290
named Link to discuss a license for manufacturing.

18:03.230 --> 18:06.366
I've got this new lens implant. You've made

18:06.428 --> 18:09.822
similar things. How about I sell you

18:09.836 --> 18:13.474
a license to make my new lens implant?

18:13.642 --> 18:17.938
And during this conversation, Link actually makes a suggestion to improve

18:17.974 --> 18:21.402
the lens. He suggests that you could make the lens have just like,

18:21.416 --> 18:25.290
a single piece of certain

18:25.340 --> 18:28.842
type of plastic. I believe that instead of having some

18:28.856 --> 18:32.178
of these distinct components you have to put together, you could just make it all

18:32.204 --> 18:35.958
as one and you get some other improvements because of that, rather than

18:35.984 --> 18:40.710
just beyond just the ease of manufacturing.

18:42.050 --> 18:45.858
And so then with this idea, Panno then goes and files a

18:45.884 --> 18:49.750
CIP of his original patent that includes

18:49.810 --> 18:53.622
this new improvement. But he only names himself as

18:53.636 --> 18:57.500
an inventor. There's no mention of Link

18:58.130 --> 19:01.942
on the CIP, and during the discovery,

19:01.966 --> 19:05.386
it actually comes out that Link was a bit surprised when he eventually

19:05.458 --> 19:09.380
saw the CIP and his name wasn't on it.

19:10.070 --> 19:13.710
So jump forward a bunch of years and IOLAB, who has

19:13.760 --> 19:18.346
seemingly no relationship to to Link, it's just not another manufacturing

19:18.418 --> 19:21.726
company they get.

19:21.908 --> 19:25.702
Pano asserts that Il

19:25.726 --> 19:29.082
Lab has been infringing his

19:29.156 --> 19:33.042
implant design, and as his standard

19:33.116 --> 19:36.838
Il Lab counter suits, the patent is Invalid.

19:36.874 --> 19:40.710
And there's a bunch of reasons why it's Invalid. But the one that's relevant here

19:40.760 --> 19:44.358
is that for improper inventorship. Somehow they figured out that

19:44.504 --> 19:48.534
about this conversation with Link, that Link was

19:48.632 --> 19:52.018
not named on the patent. And so their argument

19:52.054 --> 19:55.446
goes like this, that Link should actually just be the only

19:55.508 --> 19:59.278
inventor on the CIP because Pannoose contribution

19:59.434 --> 20:02.360
was already prior art.

20:02.990 --> 20:05.600
That material was already out there.

20:06.710 --> 20:10.122
He had already been making offers for sale. He had already filed for

20:10.196 --> 20:13.474
a patent on his portion

20:13.642 --> 20:17.358
of the invention because the important bit of

20:17.384 --> 20:20.946
the CIP was this

20:21.128 --> 20:23.120
single body form.

20:25.010 --> 20:27.860
As we can tell, seemingly Links idea,

20:29.870 --> 20:32.622
they go in strong with the fact that no,

20:32.756 --> 20:36.462
not only should Link should be the

20:36.476 --> 20:40.006
sole inventor, and the Cork decides that sole inventor

20:40.078 --> 20:43.494
no coinventor, probably. And so

20:43.532 --> 20:46.806
some quotes here is that during

20:46.868 --> 20:51.646
this meeting with Link, that panel was doing more than just simply providing

20:51.838 --> 20:55.074
Link with well known principles or explaining the state of the art.

20:55.232 --> 20:59.038
This was a personal meeting between the two. They were talking specifics

20:59.074 --> 21:02.550
about what Hannah had already done. The details of

21:02.600 --> 21:06.382
his implant design. And so it was more than just handing

21:06.406 --> 21:10.170
him a textbook or providing some general principles.

21:10.910 --> 21:14.998
And then, quote, because it is undisputed that the invention was conceived

21:15.034 --> 21:18.270
while Link and Panu were engaged in the collaborative enterprise.

21:19.430 --> 21:22.858
And it is further, more undisputed that Panu conceived significant

21:22.894 --> 21:26.154
aspects of the invention. Panu is

21:26.192 --> 21:30.414
certainly at least a coinventor. And again, this is because the claim did

21:30.452 --> 21:35.178
claim more than just the

21:35.204 --> 21:38.854
single manufacturing, the single body form. It had all these other details

21:38.902 --> 21:42.202
that were related that were of Pane's contribution.

21:42.286 --> 21:45.690
Now, many of these were from the

21:45.740 --> 21:49.290
original filing, and that were of stuff

21:49.340 --> 21:52.818
that he had been talking to people about during his offers for

21:52.844 --> 21:56.394
sale. So two things

21:56.432 --> 21:59.826
that stood out to me here and the court briefly touches on it is that

21:59.888 --> 22:05.190
inventorship can be corrected. So is

22:05.240 --> 22:08.446
a death sentence for a patent.

22:08.578 --> 22:12.222
Improper inventorship can be

22:12.236 --> 22:16.498
the nail in the coffin and grounds for invalidity. If, though you demonstrate

22:16.534 --> 22:19.460
that the applicant was trying to pull something,

22:20.210 --> 22:23.650
if they're acting in bad faith, they're trying to hide a contributor.

22:23.710 --> 22:27.860
If they're trying to play games with the patent office, and you can prove that,

22:28.370 --> 22:32.182
then it just outright improper inventorship becomes grounds

22:32.266 --> 22:35.994
for an invalidity. And that's because,

22:36.032 --> 22:39.238
again, how the Constitution is written that IP

22:39.334 --> 22:42.562
goes to the inventor. If you've got improper

22:42.706 --> 22:46.570
inventorship on there, then it's a no legal document

22:46.630 --> 22:50.262
because it's not to the inventor. However, if they legitimately made

22:50.276 --> 22:53.298
a mistake, the patent holder is

22:53.324 --> 22:56.746
allowed to just go back and correct it even after it's issued.

22:56.938 --> 23:00.402
And I know they actually in this case, do actually

23:00.476 --> 23:04.630
have to do it. So there was kind of a somewhat curious

23:04.690 --> 23:08.458
section I found where it says like, oh, if it's

23:08.494 --> 23:11.734
found that they honestly made a mistake and it's got improper

23:11.902 --> 23:15.090
inventorship and they're notified of that,

23:15.260 --> 23:18.538
and then they don't do it. Well, then the patents

23:18.574 --> 23:22.546
Invalid, they actually have to follow through on correcting the inventorship

23:22.618 --> 23:26.134
when impropership is discovered.

23:26.242 --> 23:30.320
So in that sense, some of this topic does feel,

23:30.770 --> 23:34.520
in certain circumstances a bit irrelevant in a way,

23:36.570 --> 23:39.718
so sure they could very well have improper vendorship on this case.

23:39.744 --> 23:43.222
But they could also then just easily go fix it. So this was just

23:43.296 --> 23:47.258
one of many things in aisleab's counter

23:47.294 --> 23:49.090
sew of invalidity.

23:51.970 --> 23:56.222
The amount of focus that got here does feel a bit weird because of

23:56.416 --> 23:58.430
it's seeming practical,

24:00.370 --> 24:04.118
easy to fix. But then the other thing that kind of bothered me about

24:04.204 --> 24:07.782
this one case is the fact that this was a CIP. It feels

24:07.806 --> 24:11.490
like I'm a bit confused as to how the court

24:11.550 --> 24:14.874
did not seemingly recognize some of the consequences

24:14.922 --> 24:20.330
of the fact that this was indeed a CIP. So many of Pannoose contribution,

24:20.710 --> 24:24.220
although, yes, he's been out there talking about it.

24:26.350 --> 24:30.218
Those elements would be safe from the priority analysis because of

24:30.244 --> 24:34.410
the CIP. And then similarly, in order to claim priority

24:34.470 --> 24:37.538
back to a previous document in the US, you do.

24:37.564 --> 24:40.780
Generally, you do need one

24:41.530 --> 24:44.418
continuity of one inventor.

24:44.574 --> 24:48.290
So it would be weird to me to then eliminate in a CIP

24:50.110 --> 24:51.770
the linking inventor.

24:53.830 --> 24:57.318
That just seems like a formal incompatibility that you're claiming

24:57.354 --> 25:00.342
priority back to a CIP to a previous document,

25:00.366 --> 25:04.790
but then eliminating the inventors of the previous document, even though it's supposed to inherit

25:05.770 --> 25:08.750
all the subject matter from that document.

25:14.570 --> 25:18.330
This would hinge a lot on the exact wording of the claim.

25:18.890 --> 25:23.494
Right. If the claim were entirely

25:23.602 --> 25:27.380
focused on what the new guy,

25:29.910 --> 25:34.390
that would be one case. But if there were other elements preexisting

25:35.670 --> 25:39.862
elements from the original application, which I

25:39.876 --> 25:44.050
don't think that would be unreasonable. Right. You contextualizing

25:46.110 --> 25:49.874
you contextualize the new elements with some of the pre existing

25:49.922 --> 25:55.210
elements. Those would be different scenarios.

25:56.490 --> 25:59.734
Yeah, that's a good point. I actually had a similar kind of a thought as

25:59.772 --> 26:03.214
you were talking about this, Dan, and I'm wondering if you come across anything,

26:03.372 --> 26:08.234
any explanation like this. And I know that examiners

26:08.282 --> 26:12.058
maybe sometimes don't agree, but a

26:12.084 --> 26:15.814
claim is supposed to be allowable. It's not

26:15.852 --> 26:19.654
supposed to be able to be rejected by a 103, even if all

26:19.692 --> 26:22.718
the claim elements individually were previously known.

26:22.814 --> 26:24.960
But together they're non obvious.

26:25.890 --> 26:29.278
Yeah, somewhat of a corner case, but I think it

26:29.304 --> 26:32.854
just came to mind that. Yeah, it kind of does make sense to me

26:32.892 --> 26:36.322
that picking out each limitation on its own and who invented it,

26:36.336 --> 26:40.080
and is it in the prior art? Sure, it can

26:40.650 --> 26:44.170
yield the proper analysis in the end, whether a claim is allowable or not,

26:44.220 --> 26:47.482
but not always. There's this Gray area.

26:47.556 --> 26:48.420
In a way.

26:51.030 --> 26:54.562
I'm glad you phrased it that way because I

26:54.576 --> 26:57.686
think that is a very valuable consideration here to have, because indeed,

26:57.758 --> 27:01.318
it's very easy to especially because you

27:01.344 --> 27:04.022
are supposed to in this inventorship analysis,

27:04.106 --> 27:08.220
say, okay, party A came up with

27:08.850 --> 27:12.454
element A, party B came up with element B, but indeed, you're right

27:12.492 --> 27:16.034
that you're supposed to consider claims as each claim

27:16.082 --> 27:19.754
holistically, and that you're not just splicing

27:19.802 --> 27:23.438
out every line and staring at each element

27:23.534 --> 27:26.854
and avoid. So yeah, indeed, that could

27:26.892 --> 27:31.114
very well be the motivation and

27:31.152 --> 27:35.098
solve some of this discrepancy. But I got

27:35.244 --> 27:39.978
one more case here. That it's

27:40.014 --> 27:43.650
this again. And so I looked a bit further

27:43.710 --> 27:47.486
because this Panu case comes up. It comes up a

27:47.488 --> 27:50.990
lot. It seems to be one of the standard cases now to

27:51.040 --> 27:53.970
reference in these sorts of situations.

27:54.150 --> 27:57.159
And so a much more recent case from 2020,

27:57.169 --> 28:00.882
and it's

28:00.906 --> 28:04.130
now been appealed or it's waiting. It's trying to get Cert

28:04.180 --> 28:08.202
from the Supreme Court, Dana Farber Cancer Institute versus owner

28:08.226 --> 28:12.338
pharmaceutical company. And it's a similar

28:12.424 --> 28:15.614
sort of similar story here. You got a bit more,

28:15.652 --> 28:19.098
though, prestige and some bigger parties involved

28:19.134 --> 28:22.410
tense. Why this one is maybe going to the Supreme Court,

28:22.470 --> 28:26.034
but it involves the 2018 Nobel laureate

28:26.082 --> 28:28.010
doctor Tosco Honjo,

28:28.930 --> 28:32.418
who is attached to own a pharmaceutical for this patent

28:32.454 --> 28:36.950
case. He received the reward in medicine and physiology

28:39.530 --> 28:43.182
and then two scientists, Dr. Gordon Freeman and Dr. Clive Wood, who are

28:43.196 --> 28:46.566
attached to Dana Farber for this case. And this is all about

28:46.628 --> 28:50.718
antibody mediated cancer treatments that

28:50.744 --> 28:54.414
involve the PD One receptor. So just

28:54.452 --> 28:57.922
briefly it was a way of look of kind of identifying cancer cells

28:57.946 --> 29:01.378
versus healthy cells, and then some instances where cancer cells

29:01.414 --> 29:04.818
are not showing certain receptors and so of

29:04.844 --> 29:08.718
an ability with antibodies. If you could discern these situations and

29:08.744 --> 29:12.978
bind to the receptors you can develop. And all

29:13.004 --> 29:16.674
these guys did develop treatments that allow for

29:16.772 --> 29:19.810
greater selectivity of cancerous versus

29:19.990 --> 29:23.430
non cancerous cells.

29:24.170 --> 29:28.930
So the story kind of goes like this. In the early 90s, Hong Joe identifies

29:28.990 --> 29:32.610
the original gene sequence and the receptor.

29:33.890 --> 29:37.746
He and his lab are doing some fundamental work there on

29:37.868 --> 29:41.634
the genomics and the proteomics of

29:41.672 --> 29:45.486
the receptor. Back then in the 90s and

29:45.488 --> 29:49.302
then Brown 98, Hondo meets with this

29:49.316 --> 29:54.510
is when he gets involved with Ono the company and

29:54.560 --> 29:57.750
meets up with Dr. Wood and they set up a collaboration.

29:59.870 --> 30:02.794
Wood sharing information independently.

30:02.902 --> 30:06.870
Dr. Freeman is independently researching

30:07.490 --> 30:09.680
wagons of this type.

30:11.210 --> 30:14.866
Originally kind of unaware of what was going on with Dr. Hone Joan Wood,

30:14.938 --> 30:22.414
but eventually he is brought into the fold. He joins the coalab and

30:22.512 --> 30:26.290
during this process Dr. Freeman's work does lead to

30:26.460 --> 30:30.142
before he knew exactly how it

30:30.156 --> 30:33.958
would interact, he ends up discovering something that does indeed bind to

30:34.044 --> 30:37.526
the PD One receptor. That becomes

30:37.538 --> 30:41.030
a huge jumping point starting

30:41.080 --> 30:45.350
point for a lot of the powerful research that comes subsequently.

30:45.970 --> 30:49.790
But curiously, to add to the drama in 99,

30:49.960 --> 30:53.582
about a year into this collaboration, Dr. Freeman and

30:53.596 --> 30:57.158
Wood go ahead and file a provisional in the US without Dr.

30:57.304 --> 31:00.554
Hondo, and the court makes a point,

31:00.592 --> 31:04.780
though, that these are not the patents that issue, but definitely

31:05.110 --> 31:08.442
is going to be a bit of a probably adds to the drama

31:08.466 --> 31:10.610
and some of the ill will between these parties.

31:11.530 --> 31:15.278
But notably in 2000, the group then does go and

31:15.304 --> 31:18.710
publish a Journal article on what they've been working

31:18.760 --> 31:22.382
on in June, though of 2000

31:22.456 --> 31:26.046
is when Dr. Hong Joe learns of this provisional

31:26.118 --> 31:30.162
that he's not named on. Despite that it's in this ballpark.

31:30.246 --> 31:33.326
It's in the line of work that they've been working on,

31:33.508 --> 31:36.782
and Dana Farber declines to add him. Dana Farber tells him that he

31:36.796 --> 31:40.950
can go seek the normal remedy available to parties

31:41.010 --> 31:44.682
before the patent office, and he can go start his legal complaint.

31:44.706 --> 31:48.338
But now Dana Farber refuses to add Doctor Hondo to

31:48.484 --> 31:51.640
this 1999 patent application.

31:52.750 --> 31:55.480
But again, no, these are not the patents at issue,

31:56.050 --> 32:00.410
but it's probably very upsetting

32:00.730 --> 32:04.154
to Doctor Hondra so much so

32:04.192 --> 32:07.470
that by the end of the year in 2000 he stopped sharing results,

32:07.530 --> 32:11.390
so he is further withdrawing from the group.

32:11.440 --> 32:15.038
There is apparently one more group meeting they have, but by

32:15.064 --> 32:19.530
late 2000, Dr. Hondro is no longer freely

32:19.590 --> 32:22.586
sharing his own experiments with his group.

32:22.708 --> 32:26.510
He's got a team of his own, and they're

32:27.010 --> 32:30.978
sort of looking in a different direction, but they're certainly within the scope

32:31.014 --> 32:34.590
of this PD one receptors, similar receptors

32:34.650 --> 32:38.210
and groups that bind to it. So in 2002,

32:38.260 --> 32:42.402
then Doctor Honda goes and files his own patents without naming Doctor Freeman

32:42.426 --> 32:45.818
or Wood. He kind of returns the favor, and he's on

32:45.844 --> 32:49.994
these patents, limiting himself to work that

32:50.032 --> 32:53.538
is much strongly supported by his own group's experiments.

32:53.574 --> 32:57.662
He actually avoids naming. He avoids expressly naming the

32:57.676 --> 33:01.910
ligands and the work done by the other collaborators.

33:03.070 --> 33:06.218
But the court does note, quote, is not without interest that

33:06.244 --> 33:10.158
in Doctor Hondo's acceptance speech for the Nobel Prize, he credited

33:10.194 --> 33:13.060
Doctor Freeman as a major collaborator in his work.

33:13.810 --> 33:18.050
So Hondra now has his own applications that don't name Dr.

33:18.100 --> 33:21.422
Freeman or Wood. And then Dana Farber goes,

33:21.496 --> 33:22.120
hey,

33:25.130 --> 33:28.458
Dr. Freeman and Wood should totally be on your patents then.

33:28.484 --> 33:31.818
Therefore, because they have an obligation to

33:31.844 --> 33:35.470
assign to us, we should be coowners of this patent alongside

33:35.530 --> 33:36.270
Ono.

33:38.130 --> 33:42.370
So in the arguments presented to the Federal Circuit

33:43.170 --> 33:47.626
that the Ono makes the following to

33:47.688 --> 33:51.720
simplify makes the following arguments that the subject matter of these given

33:52.890 --> 33:56.040
of the patents of the 2002 patents that issue.

33:57.090 --> 34:00.218
They do say the subject matter is far enough removed

34:00.254 --> 34:04.150
from the original collaboration of Freeman and Wood that we're not claiming

34:05.070 --> 34:08.938
we're not claiming the PD one receptor or something. We're not claiming the

34:08.964 --> 34:12.730
specific wagons. We're claiming methods and other

34:12.780 --> 34:16.762
aspects that were born out of these subsequent experiments done without

34:16.836 --> 34:20.222
Dr. Freeman and Wood that were done by Dr. Honjos himself.

34:20.306 --> 34:24.662
And the immediate stat is immediate collaborators

34:24.746 --> 34:27.842
at Oto rather than with the Dana

34:27.866 --> 34:29.710
Farber Institute.

34:30.810 --> 34:34.582
Similarly, Furthermore, he argues that they argue that the

34:34.596 --> 34:37.754
patents were actually issued over the 99 filing,

34:37.802 --> 34:40.210
so these patents have already been examined.

34:41.850 --> 34:45.358
Those patents by Freeman and Wood are out there, and these

34:45.384 --> 34:50.702
patents were issued over that they

34:50.716 --> 34:54.078
are obviously novel and not obvious by the standards

34:54.114 --> 34:57.422
of the presumption of validity of vision patents, that there is

34:57.436 --> 35:00.820
a distinction between the 99 filing and this new stuff.

35:01.630 --> 35:05.870
And then Furthermore, they argued that your

35:05.920 --> 35:10.386
2000 Journal article disclosed

35:10.578 --> 35:13.670
the scope of what you could say were Dr.

35:13.720 --> 35:16.660
Freeman and Dr. Wood's contribution. That sure,

35:17.650 --> 35:21.458
even if you make the case that they

35:21.484 --> 35:25.430
were influential and they had done some original work

35:25.540 --> 35:29.274
that led to the 2002 patents

35:29.322 --> 35:34.166
at stake. All of that subject matter is

35:34.228 --> 35:37.910
prior art because it was disclosed in 2000 in the Journal article.

35:39.010 --> 35:42.618
And so it goes as far as the court interpreted

35:42.654 --> 35:46.118
this, that Ono urges us to

35:46.144 --> 35:49.670
adopt a legal rule that once a contribution is made public,

35:49.780 --> 35:53.502
it quote no longer qualifies as a significant contribution

35:53.586 --> 35:57.160
to conception and quote from the

35:57.850 --> 36:02.738
applicants brief here

36:02.764 --> 36:06.270
is very much the crux of the matter is if the claims

36:06.330 --> 36:10.490
define the invention and claims are to be interpreted

36:10.990 --> 36:14.598
over the prior claims are only ever issued over the prior

36:14.634 --> 36:19.178
art, then shouldn't then there be an analysis of

36:19.204 --> 36:22.862
the prior art towards who gets to

36:22.876 --> 36:26.706
be named an inventor on this case. And so, yes, here strongly,

36:26.778 --> 36:30.218
Ono is presenting Dr. Freeman Woods had already disclosed their

36:30.244 --> 36:33.794
material in 2000 from this Journal article, so there's no need

36:33.832 --> 36:37.710
to name them. But the court ultimately

36:37.770 --> 36:40.418
did decide with Dana Farber. Well,

36:40.564 --> 36:43.360
no conception here is the key,

36:44.170 --> 36:48.590
and that the work of these 2002 patents

36:49.150 --> 36:52.886
is, dare I say, derivative, or it is close

36:52.948 --> 36:56.798
enough that such that the conception is complete when an idea is

36:56.884 --> 37:00.230
definite enough that one of skill and the art could understand the invention.

37:00.850 --> 37:04.960
And so that the work of these 2002 patents is

37:05.290 --> 37:09.258
such that from

37:09.284 --> 37:12.382
the contribution of Dr. Freeman and Doctor Wood,

37:12.466 --> 37:16.038
that the details of what is

37:16.064 --> 37:19.806
claimed in 2002 is still

37:19.868 --> 37:23.902
lumped under that conception performed

37:23.986 --> 37:28.674
by Dr. Freeman Wood. And then the

37:28.712 --> 37:32.480
decision outright says it here that quote, joint inventorship does not depend

37:32.930 --> 37:36.714
on whether a claimed invention is novel or non obvious over

37:36.752 --> 37:38.790
a particular researcher's contribution.

37:40.250 --> 37:43.062
But I will be honest, this feels kind of weird to me.

37:43.076 --> 37:47.058
That quote just above about whether

37:47.084 --> 37:50.682
or not one of skill in the art could understand the invention. That kind

37:50.696 --> 37:54.870
of feels like an obviousness type assessment

37:55.190 --> 37:59.238
to me that you're claiming something that

37:59.264 --> 38:02.934
would be considered obviousness obvious from person

38:02.972 --> 38:06.498
of one and skill in the art from a certain understanding from a certain point

38:06.524 --> 38:09.654
of time. So yeah, this case feels weird to me.

38:09.692 --> 38:13.122
And finally, Ono has petition from

38:13.136 --> 38:16.558
the Supreme Court outright asking whether the Federal Circuit error

38:16.594 --> 38:20.434
in adopting a bright line rule that the novelty and not obviousness

38:20.482 --> 38:24.670
of an invention over alleged contributions that were already in the prior

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are not probative of whether those alleged contributions

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were significant to conception. Really, just again

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focusing in on this item.

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And I'll be honest, I'm not quite sure

38:39.816 --> 38:43.258
where I fall on

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this topic. I can kind of see early on in

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my simple example about Ishmael

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and quiqueweg how that goes that way. But in this case I will

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say with Doctorhon Joe Freeman and Wood,

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if your own inventions can become prior art for yourself, because you

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already disclosed stuff, is that

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related analysis not relevant when you've got multiple parties

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at stake here,

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I wonder if part of it is maybe practical in

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a way that when an entity is

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filing an application, they don't know every

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piece of priority in the world. And even after something is allowed, it goes through

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litigation and tons more prior art will pop up.

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And so that seems like a practical thing.

39:37.252 --> 39:40.300
That would be a very difficult bar to me.

39:40.750 --> 39:44.042
You must know every piece of prior art to get the

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inventorship right. Yeah,

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I don't know if it's like in any of these judges minds

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when they're making these rulings, but I could see how

39:57.548 --> 40:01.100
it would be a difficult system to abide by. Yeah.

40:06.030 --> 40:09.430
That's also why I started this section

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with this. There's perhaps an equivocation

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we make about being named in inventors that there's

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a first standard for getting your name on

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the patent to begin with at filing.

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And then maybe it's not so

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clearly distinct. But maybe as the claims changed,

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there's maybe a bit of a game to be played as to who remains

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named on the application.

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But being an inventor such

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that you are named on the application to begin with is

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still being an inventor versus declaring

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yourself an inventor only once the case is issued,

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or once the case is upheld or changed

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in court because maybe

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caused a bit of a mental shift for me because I have for a while,

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to certain extent, only ever considered it's like, all right, cool. You've come up

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with something. You the inventor, and I'm going to call you the inventor for the

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practical reasons of writing things down. But deep down, maybe there's

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a bias of like, well, you're not actually an inventor until you get an issue

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patent from

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the legal definition. To a certain extent,

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maybe with this analysis isn't quite the

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case. Maybe it is. This is why I wanted to

41:39.748 --> 41:43.142
bring this topic up, because I was not expecting this level of

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nuance and this strict relationship between

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prior art and declaring an inventor, because sometimes it seems like

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the prior art is clearly playing a game with who is the inventor?

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Who are the inventors on this case. But then there's

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been some strong decisions that have been standing for a while. That Panu

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case, I believe, was from 98, and I

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continually seeing it referenced again and again looking for modern

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case law. So it's been upheld. It's been used many times,

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and it quite clearly States that novelty and

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not obviousness analysis are not relevant

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are not relevant towards a strict line drawing

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around who is an inventor or not.

42:33.210 --> 42:37.166
It is interesting. I agree with you. I wasn't expecting the level of nuance.

42:37.298 --> 42:37.980
Yeah.

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I guess I wonder if

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you're reading a Journal article and you learn something.

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Okay. The author of that article is not an inventor,

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right? I mean, it's prior art, it's published. It's public

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domain. But if you're working together with someone in a

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group,

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it's a lot harder, right to separate one person.

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Would you have come up with this if you hadn't had that conversation with them?

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And of course, Dan, these are intellectual

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contributions, if you will like intellectual discussions with

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another party. Not like talking with a technician

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about how they're going to run an experiment, but talking with someone about what

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to do about the invention.

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And I think both cases that you said, especially the

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second one. There's clear motivation for

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one side to not name the other.

43:38.970 --> 43:42.420
Factors are in the minds of the judges. Yes.

43:44.590 --> 43:46.922
This was far more interesting than I thought it was going to be. When I

43:46.936 --> 43:50.730
started looking into inventorship, I thought we'd be having a fairly straightforward

43:50.790 --> 43:54.282
talk about. Yeah, reduction to practice isn't

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necessarily required for vendorship. And here are some anecdotes

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of times I've had clients not get

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this or want to fight back, and we'd be sharing

44:05.682 --> 44:08.654
those types of stories. But, yeah, there seems to be a weird question here.

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There's certainly practical elements of this indeed, trying to get inventorship

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exactly right, having to remove people down the

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road because some bit of prior art the examiner found in the fourth

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office action making that the standard seems weird.

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But then this kind of open endedness of it also feels weird to me.

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So, yeah, food for thought. Definitely something I will be thinking about more.

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All right, that's all for today, folks. Thanks for listening. And remember to check us

44:37.696 --> 44:41.402
out at Aurorapattens dot. Com for more great podcasts, blogs and videos

44:41.476 --> 44:44.898
covering all things patent strategy. And if you're an agent or attorney

44:44.934 --> 44:47.538
and would like to be part of the discussion or an inventor with a topic

44:47.574 --> 44:51.222
you'd like to hear discussed, email us at podcast at aurorapattens.

44:51.246 --> 44:54.834
Com. Do remember that this podcast does not constantly legal advice,

44:54.882 --> 44:57.080
and until next time, keep calm and patent on.

Intro
Inventorship
The human element
Why naming inventors matters
Conception vs reduction to practice
Joint inventors
Claim change implications
Conception, inventorship, and prior art
Fictional example
Case Law: Pannu v. Iolab Corp
Correcting inventorship
Case Law: Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical Co., Ltd.
Outro