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[patag2001]

Assume a practitioner writes a patent application.  In writing the application the practitioner writes the claims to include an optical embodiment even though the disclosure from the inventor only refers to an electrical embodiment.  The practitioner knows that writing the claims only to the electrical embodiment is too narrow and that others can get around the invention by using, let’s say optical fibers.  Since the practitioner is under contract or direction to write the application for the inventor, does this mean that any ideas or broadening added to the patent application by the practitioner inure to the inventor?

[JimIvey]

I think you're asking about inventorship -- whether the practitioner becomes an inventor.

If you write broad claims that include both electrical and optical embodiments, I don't think you are an inventor -- there's no language in the claim you can identify as your own.

If you write a dependent (or just more narrow) claim that explicitly recites optical architecture, you're arguable an inventor.  It's not a bad idea to ask the inventor whether she had realized it might work with optical circuits.  If she did, you're not an inventor.  If she says, "Hey!  I never thought of that!  Cool!", then maybe you are an inventor.

Sometimes I use leading questions.  "I'm trying to think of architectures other than electric that could be used to implement your idea.  Can you think of any?"  I'm not sure that suffices, though.

By the way, I wasn't sure what you meant by "inure" so I looked it up.  I'm not sure it means what you think is means -- at least the definition didn't make sense in this context.

Regards.

[patag2001]

I think inurement involves a claim by an inventor that, as a matter of law, the acts of another person should accrue to the benefit of the inventor.  To establish inurement, the inventor must show, among other things, that the other person was working either explicitly or implicitly at the inventor’s request.

The link below relates to a patent case where a Court ruled on inurement.  I just was wondering if inurement applies to drafting an application.

Many thanks!

http://www.ll.georgetown.edu/Federal/judicial/fed/opinions/97opinions/97-1302.html

[PA]

Isn't inurement a term of art used in interference proceedings?  I think you're confusing yourself by misusing the term in a way that doesn't make sense.  As was said previously, the question you have seems to relate to inventorship and can probably be resolved as such.

[patag2001]

I pasted a portion of the contents (below) of the link I provided (above).

3 Donald S. Chisum, Chisum on Patents § 10.06[3] (1995) (“The inventor need not personally reduce to practice his complete conception. Acts by others working explicitly or implicitly at the inventor’s request will inure to his benefit.”).

So, would this apply to my broadening a patent application to add embodiments not disclosed by the inventor?

Many thanks!

[Bill Richards]

I pasted a portion of the contents (below) of the link I provided (above).

3 Donald S. Chisum, Chisum on Patents § 10.06[3] (1995) (“The inventor need not personally reduce to practice his complete conception. Acts by others working explicitly or implicitly at the inventor’s request will inure to his benefit.”).

So, would this apply to my broadening a patent application to add embodiments not disclosed by the inventor?

Many thanks!

I think Jim's 8/20/07 post addresses what you're asking.  But, to follow up, you're asking two different questions.  One is a reduction to practice question that will likely not introduce inventorship issues and will inure to the benefit of the inventor.  The other is an inventorship issue which will likely not inure to the benefit of the original inventor.

[patag2001]

Jim and Bill thanks for your inputs.

As an example to my first post, let’s say the inventor conceived the idea of detecting a crack on a ceramic surface by disposing thin wire forming a circuit on the surface.  In the event the circuit is broken, the ceramic surface is deemed cracked.  Further, let’s say the inventor never thought of using optical fibers, which have a more similar coefficient of thermal expansion to the ceramic.  The practitioner sees the optical work around and broadens the independent claim to a circuit.  Dependant claims are added to the particular wire and optical fiber embodiments for forming the circuit.  I frequently find that some inventors live in a “picture claim” world and don’t think broadly about their inventions.  As a practitioner, it is sometimes easy to think of work-arounds and come up with other structures, thereby broadening the original claim.  Is not this the job of a good practitioner?

From the respondents, it sounds like the broad independent claim is likely not an issue.  On the other hand, the dependant claim to the optical embodiment could be an inventorship issue.  

I submit the practitioner is only doing his job of constructive reduction and that the practitioner is not an inventor.  The initial idea was conceived by the inventor.  The practitioner was only attempting to broaden the initial idea conceived by the inventor.  Further, any included embodiments to broaden the patent would inure* to the inventor anyway, because the practitioner is working for the inventor.

*Chisum (from previous post):  “The inventor need not personally reduce to practice his complete conception.  Acts by others working explicitly or implicitly at the inventor’s request will inure to his benefit.”

Many thanks!!

[Isaac]

 The practitioner was only attempting to broaden the initial idea conceived by the inventor.  Further, any included embodiments to broaden the patent would inure* to the inventor anyway, because the practitioner is working for the inventor.

Reduction to practice activity for one invention can include more inventing of some other invention.   If it turns out that building a hunting bow as conceived by the inventor requires the technician to invent a technetium/promethium alloy for the bow string, what happens if the only allowable claims in the application recite that bow string material?

[patag2001]

IMO the answer is not straightforward.

Assuming the technician is working under the direction of the inventor, my initial thinking is that the string invention inures to the inventor.  Would the technician have come up with the new string if he had not worked for the inventor?

Another factor would include may include the level of collaboration between the technician and the inventor.  How much direction did the technician receive from the inventor?

I’d be interested on any other thoughts on this question.

[Bill Richards]

Would the technician have come up with the new string if he had not worked for the inventor?

I don't agree that this is the question.  If the technician contributes patentable subject matter to the invention, he's an inventor.  The "but for" analysis does not work in this context.

Another factor would include may include the level of collaboration between the technician and the inventor.  How much direction did the technician receive from the inventor?

I believe this is where the uncertainty lies.  And, it's a very fact-specific inquiry.