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 51 
 on: 07-18-18 at 10:50 am 
Started by Rabid Levity - Last post by Robert K S
Would a statutory disclaimer not be better? If a claim is disclaimed it is treated as if it never existed, would seem to eliminate any possible problem.

Before you go filing a statutory disclaimer you should consider whether or not that would place the subject matter of the disclaimed claim into hands of the public, which could have as ripple effects (a) rendering unenforceable the identical claim in the other patent and also (b) rendering unenforceable any other claim broader than the disclaimed claim, including the independent claim from which it depends, any intervening claims, and any claims from any other patent that also fall within the scope of the disclaimed claim.

 52 
 on: 07-18-18 at 10:47 am 
Started by Tobmapsatonmi - Last post by Euro-Pat-Att

However, under the US view, the entire correct inventive entity MUST be provided. The "inventor" is specifically defined and further refined by case law. The inventor is the master of the invention (he has "intellectual dominion" over the invention) and one who contributed to the claims. It does not matter where or how the inventor came up with the invention (i.e. by using data or equipment owned by someone else). As long as the inventor contributed to the claims, he is an inventor. Of course, it would be natural to expect some form of compensation to the one who provided the data/equipment in the first place, but that is a (business) consideration that should have occurred BEFORE providing said data/equipment to the inventor (i.e. it could have been contractually resolved before the data/equipment was shared, as is the case in employer-employee agreements). To the best of my knowledge, an "inventor" must be a natural person.

That's exactly my point: It usually is contractually resolved, under foreign national law, as being the legal consequence of the employment contract. If the invention is done by person A in the employment of person B, the (ownership) end result is the same as if B did it all himself (except that A has a right to be mentioned as inventor). Person A knows that he might make a patentable invention if he starts doing R&D work for person B (but then again, he might not) and both parties accept that all results, including a certain probability of a patent application, are transferred to B, in exchange for a nice salary. Usually it is considered in Europe that an R&D persons relatively high salary is compensation for the probabiltíy that he might make an invention which is not his to exploit, but his employer's (I know some countries, eg Germany, have a further compensation scheme, but that's besides the point).

It's like selling/buying a house, with both buyer and seller knowing that one of the bricks might be very special. Naturally, the price paid for the house will reflect the probability of the brick being special indeed. If it turns out to be special, that's good for the buyer, because the brick was sold as part of the houser, and if not, it's good for the seller, because he got more for the house than he would have gotten otherwise.

Now, we have digressed a bit from the original issue: Can there be an automatic assignment under foreign law of the right to apply for a US patent?

I still argue 'Yes', as part of the whole package of tangible and intangible results transferred to the employer, but I also realise that if the US courts say no (rightly or wrongly), we have no choice.

 53 
 on: 07-18-18 at 09:46 am 
Started by Tabo - Last post by Tabo
I get this kind of rejection quite frequently - the examiner simply finds a few references that seem to - in combination - have the elements of the main claim and then issues a rejection under 35 USC § 103. Upon closer inspection, the elements supposedly found in the cited references are either not there at all, or there in a kind of forced interpretation, or the examiner wrongly uses "official notice", or he just ignores certain elements that he can't find anywhere. There is no particular reason for the combinations, but the examiner makes up something that sounds plausible.

My first thought is to just write "Yur office action is stoopid", but unfortunately further legal analysis is usually required.

In the last OA of this type, I argued with the following headers:

In general

Conclusory reasons for combining references

Official notice

Claim features missing in references

Hindsight

Dependent claims

I filled out these sections with case law and an argument of the specifics.


This type of 103 rejection is quite common, and I am wondering what the optimal approach is. Any better ways of dealing with this kind of thing? Any other section headings to use to make this more convincing?

 54 
 on: 07-18-18 at 09:04 am 
Started by Tobmapsatonmi - Last post by EvilLost
@Rabid: Good point about the DE employer. I was over-generalizing and missed this.

@Euro-Pat-Att: Your reasoning is very interesting (and I generally agree that the employer owns the lab/data/everything). The crux of your reasoning seems to be based on the fact that the invention is derived from the "body of results" (which are owned by employer) and thus, anything derived from that should also be owned by the same person. Although I can follow your reasoning, I do not agree with your simplification of the inventing process (i.e. I don't think inventing is as simple as "identifying" an invention from amongst a data set).

I don't believe the EU cares much about (or even formally defines) the "inventor."

However, under the US view, the entire correct inventive entity MUST be provided. The "inventor" is specifically defined and further refined by case law. The inventor is the master of the invention (he has "intellectual dominion" over the invention) and one who contributed to the claims. It does not matter where or how the inventor came up with the invention (i.e. by using data or equipment owned by someone else). As long as the inventor contributed to the claims, he is an inventor. Of course, it would be natural to expect some form of compensation to the one who provided the data/equipment in the first place, but that is a (business) consideration that should have occurred BEFORE providing said data/equipment to the inventor (i.e. it could have been contractually resolved before the data/equipment was shared, as is the case in employer-employee agreements). To the best of my knowledge, an "inventor" must be a natural person.

Quote
And the identification of an invention in those results is a routine job expected of the employee.

I think you are oversimplifying the invention process, but it doesn't matter. Whether we say the R&D scientists is the inventor or if we say the guy reviewing the data is the inventor (or both of them); the end result is the same. US law still says that the invention vests in the inventor. There are no exceptions that I know of relating to where the equipment/data came from.

Quote
I also wonder about the following: Suppose, following your line of thought, that the employee-inventor is entitled to apply for a US patent and he does. And further suppose the invention turns out to be not novel. It could be said that in that case it wasn’t even an invention, and the employee-inventor wasn’t really the inventor.

I think this is a false-equivalence; invention and patent are not interchangable. There are plenty of inventions that do not qualify for patent protection. For example, one might invent an apparatus that does something entirely new, but this new apparatus may still not qualify for a patent because of 101 rejections (abstract idea) or 103 rejections (obvious in view of other inventions).  The mere fact that an invention is obvious in view of another doesn't mean its not an invention still....but it does mean it is not a patent-eligible invention.

EDIT: [Cut response to make it shorter and more on point]

EDIT2: I believe the US inventor requirement is, at least in part, a side-effect of the US Constitution, which states that, "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." Thus, under the US Constitution, the Congress only has the power to provide to authors and inventors an exclusive right. This right, being a property right, can then be transferred as desired.

 55 
 on: 07-17-18 at 07:14 pm 
Started by Tobmapsatonmi - Last post by Euro-Pat-Att
Again, I appreciate your effort.

Here's my take on the invention process:

R&D work gets done by an R&D person. The result of this R&D work is a body of results: experimental data, knowledge, some partially finished prototypes, a list of further possibilities to further explore/test, files full of concept drawings, results from a brainstorming session, you name it. There is not a single moment in time that these results are generated, it's an ongoing thing, the amount of results increases with time. This body of results is, under the employment agreement, clearly owned by the employer. I hope you don't disagree with this.

At this point in time there is no invention yet, and consequently there can't be an inventor either. And yet the results are, under national law, already the exclusive property of the employer, out of reach of US (patent) law.

At a certain point in time (scheduled or spontaneously) somebody (or a group) reviews the results and realises that there may be something in it that could be patentable. This somebody could be management, or the R&D person, or a result-reviewing patent attorney, or all together, it doesn’t matter.
 
The essential point is: the invention can only be made after the R&D results are known, and these results are, immediately upon their generation, owned by the employer. At the moment the invention is identified, these results, tangible or not, are no longer the inventor’s to freely use, but only by consent of his employer.

Even if you take the example of a lone engineer getting a budget from his boss to work for a full year without interference, and suddenly he sees the light and identifies an invention, the fact remains: He could only do that based on data, equipment, background information owned by his employer, to which he wouldn’t have had access hadn’t it been for his employer giving him access.

That’s what I meant earlier: Before the invention is made (by whomever) it is undected in a body of R&D results. This period could be second or years, doesn’t matter. By the time US patent law comes into play, ownership of the body of resukst including the invention, until that time unidentified and undetected inside the body of R&D results (which are possibly not even written out by the R&D person) has already been transferred to the employer.

Whether the invention is identified by the R&D team, or by a results reviewer, or by whomever, doesn’t really matter. They are basically just acting as agents for their employer, doing nothing more than professionally processing information owned by, and provided to them for that specific purpose, by their employer.

An analogy could be: somebody finding gold on your land. Who’s gold is it?

The R&D results generated by the employee are owned by the employer based on national law. And the identification of an invention in those results is a routine job expected of the employee.

I find it fascinating how your view and mine could be so different. To me an invention is a probable result of a sufficient amount of R&D work, and the person identified as the inventor just happened to be there at the right place and the right time. It can naturally only be the owner of the R&D results who qualifies for the right to apply for a patent on whatever of potential value is identified in those R&D results.

I also wonder about the following: Suppose, following your line of thought, that the employee-inventor is entitled to apply for a US patent and he does. And further suppose the invention turns out to be not novel. It could be said that in that case it wasn’t even an invention, and the employee-inventor wasn’t really the inventor. It would then lead to the absurd situation that in retrospect he wasn’t really entitled to apply for patent, but he did so anyway.

Now I must admit is all theoretical. If the US requires something, and if this is not present the patent is unenforcible in the US, then that’s what we have to live with.

 56 
 on: 07-17-18 at 06:40 pm 
Started by MR - Last post by Rabid Levity
I also often see part B of the form 82 used as a general POA, without the "optional" application serial number information being provided, then that form used for multiple uses of the part A transmittal each time identifying the application of interest.  Note that even the date in which the person signing on behalf of the applicant is "optional".

I do not think I have ever heard of any justification for this practice.  Maybe the thinking is, in the rare cases where this may be challenged, obtaining a fresh POA properly identifying the application is easily enough done.  Also it appears the USPTO encourages this practice by making the only mandatory items the ID of the person(s) getting POA and the ID of the applicant and who is signing for it.


ETA: As for the IBM case you mention above, note the original POA (B part) was signed by the in-house person at the time of the filing of the parent application.  Then when the continuation you mentioned was filed, they simply used the same part B and attached a new part A identifying the continuation. 

 57 
 on: 07-17-18 at 06:26 pm 
Started by EDCGadgetGeek - Last post by jeff.oneill
What EvilLost mentions is a reason that many large entities will keep a US continuation pending, literally throughout the entire 20 year cycle life, for patent application deemed to cover very important aspects of their technology.

It is a great strategy even for small companies.  Maybe not the entire 20-year term but for some years.

 58 
 on: 07-17-18 at 06:18 pm 
Started by Rabid Levity - Last post by lazyexaminer
I agree with what you say in theory, obviously with no real world experience. Having a duplicate claim shouldn't make both claims unenforceable.

Re the certificate of correction, I don't know if this is necessarily a mistake of a clerical nature or typo or of minor character as the statute requires, but maybe it is. Would a statutory disclaimer not be better? If a claim is disclaimed it is treated as if it never existed, would seem to eliminate any possible problem.

 59 
 on: 07-17-18 at 05:58 pm 
Started by memekit - Last post by Rabid Levity

If I have 0.5 uM in 1L of H20 to make it "effective" then I can simply have 1.0 uM in 2L of H20....I don't infringe, but its the same mixture...



I'm not sure I understand, or we may have a units confusion issue.  I read "0.5 uM" as 0.5 micro molar concentration since the OP mentioned concentration.  So, 0.5 uM is never the same as 1.0 uM regardless of the amount of solvent.

But maybe the OP meant something else, and it appears you took it to mean micro moles (total amount) and not micromolar concentration.  Maybe OP can let us know.


Editing to add, besides clarifying for us what is meant by "0.5 uM", perhaps the original poster could also flesh out what it is that is attempted to be claimed?

I do not understand the argument that claiming the use of a chemical at 0.5 uM to do the desired effect could implicate someone merely selling that same chemical, on the chance that someone could or might use it at the specified 0.5 uM and for the specified desired effect.

If the chemical is not patentable in its own right (and it sounds not, else why would one claim use at a certain concentration to achieve an effect, instead of claiming the chemical itself), then obtaining claims around a use at a certain concentration cannot ordinarily take the chemical out of the public domain.

There are some caveats to this, for example induced infringement, as where you get our claim and someone starts marketing that chemical specifically for use to achieve what you have patented.

 60 
 on: 07-17-18 at 05:45 pm 
Started by Tobmapsatonmi - Last post by Rabid Levity


It does work in both ways in the sense that a US law could not control a German national patent right either. For example, imagine a German inventor living in the US and working for a US company. Obviously, the US patent rights would vest with the inventor (and assuming an obligation to assign in the work contract, the employee would then assign it to the employer). However, what about the German patent right? I am strongly of the position that the German national patent right, under German law, would still automatically vest in the employer (assuming the German inventor meets the requirements of being an "employee" under German law).


Hello.  The breadth of this rather voluminous conversation is beyond my knowledge; however, I will comment on the one thing you mention above. 

To the best of my recollection, the DE national inventorship law indicates that you are correct that a DE inventor resident in US and working for a US corporation falls under US law such that the invention vests in the inventor.  It is up to the US corporation to obtain from the inventor an assignment of the invention, rights to file in the US and outside the US, and the rights to claim priority to that first US filing in filings to be made outside the US.

Now, as to the second part of what you say, I am not so sure this is correct.  DE national inventorship law pertains only to inventors working for DE employers.  In the scenario you put forth, there is not a DE employer.

Therefore, consider that same DE inventor resident in US and working for a US corporation. If the US corporation fails to secure for itself all the rights I mentioned, then (using the framework you have been modeling for us), the US rights certainly will remain vested in the inventor and he may make a US patent application. 

There is no DE employer for any DE rights to vest in.  Meanwhile, based on how they look at such rights in EU (including DE), besides the right to have made the US application, the rights also to file applications in EU and DE and the rights to claim priority to that first US application also reside in the owner of the invention - the inventor.

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