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PowerPedia:Inventor

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An inventor is a person who creates or discovers new methods, means, or devices, The word "inventor" comes form the latin verb invenire, invent-, to find. [1] (http://dictionary.reference.com/search?q=inventor&db=*)[2] (http://www.m-w.com/cgi-bin/dictionary?book=Dictionary&va=invent)

Description

Inventorship is a key determination in establishing patent rights. The system of patents was established to encourage inventors by granting limited-term, limited monopoly on inventions determined to be sufficiently novel, non-obvious, and useful. In the U.S. the intellectual property clause of the Constitution permits (but does not mandate) laws to be passed establishing patent and other intellectual property rights.

Patents may be granted on technical devices such as mechanical, electrical or, in some places. software devices or methods. Many things which are not patentable, or are not generally patented, may nevertheless be considered the product of the work of an inventor. Examples include new methods or products of artistic expression or mathematics. As in the case of formal inventorship, the key element is surprise to those knowledgeable in a domain.

Inventor's notebook

An inventor's notebook is used by inventors, scientists and engineers to record their ideas, invention process, experimental tests and results and observations. It is not a legal document but is valuable, if properly organized and maintained, since it can help establish dates of conception and reduction to practice. The information can improve the outcome of a patent or a patent contestation.

Purpose

A patent grants its owners the right to sue those who manufacture and market products or services that infringe on the claims declared in the patent. Typically, governments award patents on either a first to file or first to invent basis. The latter is currently true for the United States. Therefore, it is important to keep and maintain records that help establish who is first to invent a particular invention.

The inventor's notebook (also called a journal, lab book or log book) is a systematic device for recording all information related to an invention in such a way that it can be used to develop a case during a patent contestation or patent-related lawsuit. The notebook is also a valuable tool for the inventor since it provides a chronological record of an invention and its reduction to practice.

A "virtual inventor's notebook", in which one scans note pages and emails them to oneself, would likely serve the same patent contestation protection, the same chronological record, and would be less likely to be lost or stolen. However, confidentiality could be at stake using such techniques.

Suggested guidelines

These are suggested guidelines for creating and maintaining an inventor's notebook. The guidelines are by no means meant to be construed as legal advice. If legal advice is needed regarding an inventor's notebook, consulting an attorney is advised.

  • Use a book with stitch-bound, consecutively numbered pages. Pre-printed notebooks that include features described in these guidelines can be obtained from commercial publishers. Composition books and journals are acceptable if consecutive page numbers are written in the upper right-hand corner in permanent ink. Both sides of each page must be numbered
  • One book can be used to record multiple concepts but many inventors prefer to dedicate one book to each project
  • All original concepts and relevant data should be immediately entered into the notebook. Relevant data includes sketches, descriptions of the concept, motivation for the concept and results of searches for prior art. Headings should be used to separate topics and each entry must be dated. Make all entries in a consistent manner using consistent language, charts and numbering systems
  • Include entries on all experiments, experimental results, observations and conclusions
  • If a concept or prototype is tested with a group of people, include entries explaining the test, the methods used, results, observations and conclusion. Note whether participants signed non-disclosure agreements
  • Record any public disclosure of a concept, invention, prototype or experimental results. Public disclosure includes, but is not limited to, printed or electronic publication, presentations, discussions with potential customers, tests and demonstrations and informal discussions with persons not directly associated with the organization that may ultimately patent the invention
  • Brief entries are permissible but include enough detail for someone else knowledgeable in the pertinent fields to successfully duplicate the work
  • Enter all entries in chronological order
  • Label all figures and calculations. Use numbers in bubbles and arrows to assign numbers to features that are discussed in entries and reference the pertinent figure or calculation in those entries
  • Never remove any pages from the notebook
  • The first few pages may be reserved as a Table of Contents. Add Table of Contents to the top of each such page even if no items are yet entered on that page
  • Start entries at the top of the first page, write to fill the page from left to right and continue to the bottom of the last page of the notebook. Do not leave blank spaces, instead, draw a single line across each blank line
  • Never let anyone else make entries in the notebook, excepting witness signatures
  • Never erase or remove material added to the notebook. Draw a line through errors, add your initials and make corrections nearby
  • Materials such as printed pages, test equipment hardcopy, dated receipts, photographs and CAD drawings must be affixed with paste to pages in the notebook. Include dated written entries for each item. For photographs, draw numbers and bubbles and arrows from the page and onto the photograph and in a nearby entry describe the features indicated
  • Materials too large for the notebook can be entered in an ancillary record but a dated written entry must be added in the journal describing the material and its location in the ancillary record
  • Have one or two persons, who have enough knowledge of the relevant fields to read and understand the entries for a given date, sign the last entry for a given date under a "Disclosed to and understood by" label. Witnesses should not be related to the author of the notebook

Famous notebooks

Though not necessarily following all the guidelines above, journals and notebooks have been kept by many famous inventors, scientists and engineers. Some of the most well-known journals include those of:

Patents and development

In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law. Under U.S. case law, an inventor is the one with "intellectual domination"[3] (http://peswiki.com/index.php/PowerPedia:Inventor#endnote_inteldom) over the inventive process, and not merely one who assists in its reduction to practice.

Since inventorship relates to the claims in a patent application, knowing who an inventor is under the patent law is sometimes difficult. "Joint inventors" exist when a patentable invention is the result of inventive work of more than one inventor. Joint inventors exist even where one inventor contributed a majority of the work. Absent a contract or license, the inventors are individuals who own the rights in an issued patent. Status as an inventor dramatically alters parties' ability to capitalize on the invention.[4] (http://peswiki.com/index.php/PowerPedia:Inventor#endnote_ethicon)

Inventorship

European

Under the European Patent Convention (EPC), identifying the inventor of a given invention is theoretically very important since "[t]he right to a European patent (...) belong[s] to the inventor or his successor in title", according to the first-to-file principle. In practice however, the European Patent Office (EPO) never investigates whether the proposed inventor is indeed the true inventor. Indeed, "[f]or the purposes of proceedings before the [EPO], the applicant shall be deemed to be entitled to exercise the right to the European patent".

Court actions relating to the entitlement to the grant of a European patent must be brought before the national court which has the jurisdiction. The jurisdiction is determined in conformance with the "Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent" or, in short, the "Protocol on Recognition" [5] (http://www.european-patent-office.org/legal/epc/e/ma4.html). Once a final decision is issued by a national court adjudging that the applicant is not entitled to the grant of a European patent, the procedure according to is applicable.

In contrast with U.S. patent law, the applicant for a European patent needs not be the inventor. The right to the European patent may validly be transferred before the filing of the application, e.g. by contract, by inheritance, or as a consequence of the "employee's rights" as determined by the applicable national law. However, the inventor has the right to be mentioned as such before the EPO . The EPO does not verify the accuracy of the designation of the inventor. The inventor may waive its right to be mentioned as such in the European patent application and European patent specification.

Inventorship is traditionally not classified as a patentability criterion under European patent law, in contrast with U.S. patent law. However, inventorship can be relevant to patentability in Europe, although in only a limited way. Where a disclosure is made within 6 months preceding the filing date of a European patent application, the disclosure is not taken into consideration if it was due to, or in consequence of, an evident abuse in relation to the applicant or his legal predecessor. Thus the identity of the inventor (who is often the applicant, or his legal predecessor) can be of vital importance.

United States

In the United States, a patent application must be filed in the name of the inventors. This requirement that a patent be taken out in the name of the inventors is derived from the intellectual property clause of the United States Constitution: "The Congress shall have power . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" (emphasis added).

An inventor is a party who has contributed at least one claim to a patent. The courts explain that "[t]he threshold question" of inventorship is "who conceived the invention." Courts recognize that invention is rarely a solitary endeavor. Therefore, conception and "intellectual domination" over an invention is important and "reduction to practice, per se, is irrelevant. One must contribute to the conception to be an inventor."

Generally, conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.."[6] (http://peswiki.com/index.php/PowerPedia:Inventor#endnote_townsend) (emphasis added). An idea is usually not "definite and permanent" or "complete" where changes resulting from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.

The naming of inventors is very important for the validity of the patent. Intentionally failing to name, or incorrectly identifying inventors, can result in a patent being held invalid. Ordinarily, the courts presume the named inventors are the inventors so long as there is no disagreement.

An inventor cannot opt out from being mentioned as such in a U.S. patent, even if the patent application was assigned before publication. Assignment of rights in a patent does not alter to whom the patent is actually issued. In fact, an assignee may only have an equitable interest in the patent until it is issued and then legal interest would transfer automatically.

list of inventors

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Notes

Citations
  1. ^  Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965)
  2. ^  Ethicon v. United States Surgical Corp., 135 F.3d 1456, 45 U.S.P.Q.2d 1545 (Fed. Cir., 1998)
  3. ^  Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930)
Other
  • It is claimed that the capacity to invent can be developed. See TRIZ, the theory of inventive