The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Sep 19th, 2020, 6:04pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Is it Patentable?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   IP final...here was my patent question
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: IP final...here was my patent question  (Read 1466 times)
Stewie
Guest
Re: IP final...here was my patent question
« Reply #5 on: Dec 16th, 2006, 7:43pm »
Quote Quote Modify Modify Remove Remove

on Dec 16th, 2006, 1:06pm, ChrisWhewell wrote:
MakeIT cannot file for patent, in the US at least, where application for patents must be made in the name of the inventor.  
 
By not naming at least one real person as inventor, the patent application will be rejected for lack of inventorship.

Maybe I'm missing something here, but the hypo states that Stacy is the inventor.  Why wouldn't the patent be filed in her name?
IP Logged
Wiscagent
Full Member
***




   


Posts: 843
Re: IP final...here was my patent question
« Reply #6 on: Dec 16th, 2006, 10:01pm »
Quote Quote Modify Modify

My earlier post was:
 
   In your scenario, you did not present any events that would trigger 35USC102
   or 103 problems with a US application by MakeIt.  I don't see the need to
   reference any case law in the answer.
 
   There might be problems in other countries.  
 
Since we're being picky, I'll amend that post as follows:
 
   In your scenario, you did not present any events that would trigger 35USC102
   or 103 problems with a US application listing the appropriate person at
   MakeIt as  the inventor... (etc. )
 
Happy now?
 
  - Rich
IP Logged

Richard Tanzer
Patent Agent
ChrisWhewell
Full Member
***




   
WWW Email

Posts: 104
Re: IP final...here was my patent question
« Reply #7 on: Dec 17th, 2006, 6:17am »
Quote Quote Modify Modify

on Dec 16th, 2006, 7:43pm, Stewie wrote:

Maybe I'm missing something here, but the hypo states that Stacy is the inventor.  Why wouldn't the patent be filed in her name?

 
Dear Stewie,  
 
I inoticed the OP's statement:  "MakeIT a widget company created a method to make widget..."   I also noticed:  "One week ago MakeIT filed for a patent".  However, I was unable to locate any text in the OP's message that supports your contention that "the hypo states that Stacy is the inventor".  
 
I did notice a statement that:   "...so did the engineer, Stacy, that made the process."  My interpretation of "made the process" is not equivalent to inventorship.  Since the OP stated that MakeIT filed for a patent, I believe  the USPTO would issue a rejection based on lack of proper inventorship.  
 
Also, the precise meaning of "spilled the beans" is not clear as well.   Just what exactly did she disclose when the beans were spilt ?  Did she spill the mustard too ?  If so, and some got on her blouse and created a new shade of magenta, is the resulting dye composition her sole invention, or is the engineer at StolIT a coinventor if he slipped in passing it to her ?  Ok, I'll stop.      
 
Point is, this stuff is very precise, and it is often the case with questions on this board that not enough information is given to provide a complete and correct answer.   On exams, professors often leave things open like this, which gives one the opportunity to explain the what-ifs and state that not enough information is given, becuase a students' statement to these effects can itself be a demonstration of their deep understanding of the underlying factors.
 
« Last Edit: Dec 17th, 2006, 11:46am by ChrisWhewell » IP Logged

Chris Whewell, M.S.
Isaac
Senior Member
****




   


Posts: 3472
Re: IP final...here was my patent question
« Reply #8 on: Dec 17th, 2006, 2:06pm »
Quote Quote Modify Modify

When an exam hypo says company X filed for a patent, is that enough to make a conclusion that Stacy did or did not sign the application as inventor?   Exam hypos are a bit artificial, and I'd generally expect a slightly bigger hint than is stated here.  I think without knowing the exact question wording we might be reading between lines that weren't actually on the paper.
 
My guess, and it is only a guess is that you were supposed to talk about 102(b).  You could cite In re Foster in talking about 102(b), but perhaps just parsing the statute is enough.   You could talk about inventorship and 102(f), but I think you'd have to make some assumptions to fill in the gaps.
 
IP Logged

Isaac
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board