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(Message started by: MindShock3 on Dec 11th, 2006, 11:14am)

Title: IP final...here was my patent question
Post by MindShock3 on Dec 11th, 2006, 11:14am
Here goes the question..

MakeIT a widget company created a method to make widgets more efficiently, nine months ago, six months ago it began to use it to make widgets more efficiently saving 25% in production costs.  All employees of MakeIT have signed non-disclosure agreements , so did the engineer, Stacy, that made the process.  

The method at its creations satisfied all the necessary requirements for patentablity, novel, non-obvious and useful.

An engineer at StolIT, MakeITs competitor took Stacy out and got her hammered and she spilled the beans regarding the method.

One week ago MakeIT filed for a patent.  Are there any issues that may bar MakeIt's patent?

Briefly i used In re Forester to answer the question which i think says obviousness is determined 1 year prior to filing not at filing or the date of invention, so just because StolIT has the method, it doesn't make the method obvious.

The second part of the exam dealt with trade secrets.

Title: Re: IP final...here was my patent question
Post by Wiscagent on Dec 11th, 2006, 6:29pm
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.

Title: Re: IP final...here was my patent question
Post by Sudhir Kumar Aswal on Dec 16th, 2006, 1:14am
Yes you can hit the patent grant on the grounds of wrongful obtaining as the Applicant does not have any legal right over the invention and is not the true and first inventor of the invention and as result you may get the patent as far as the invention belongs to you in your name.

But the exact remedy depends upon the special facts and circumstacnes of your case.


Title: Re: IP final...here was my patent question
Post by Stewie on Dec 16th, 2006, 12:14pm

on 12/16/06 at 01:14:38, Sudhir Kumar Aswal wrote:
Yes you can hit the patent grant on the grounds of wrongful obtaining as the Applicant does not have any legal right over the invention and is not the true and first inventor of the invention and as result you may get the patent as far as the invention belongs to you in your name.

It looks like you misread the hypo.  The facts don't state that StolIT filed for a patent.

Title: Re: IP final...here was my patent question
Post by ChrisWhewell on Dec 16th, 2006, 1:06pm
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.



Title: Re: IP final...here was my patent question
Post by Stewie on Dec 16th, 2006, 7:43pm

on 12/16/06 at 13:06:02, 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?

Title: Re: IP final...here was my patent question
Post by Wiscagent on Dec 16th, 2006, 10:01pm
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

Title: Re: IP final...here was my patent question
Post by ChrisWhewell on Dec 17th, 2006, 6:17am

on 12/16/06 at 19:43:53, 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.


Title: Re: IP final...here was my patent question
Post by Isaac on Dec 17th, 2006, 2:06pm
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.




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