CHAPTER 8 Outline

• Jurisdiction: United States

CHAPTER 8

Inventorship

§8.01 Originality Requirement

§8.02 The Process of Inventing

[A] Patent Law's Construct of Inventing: A Two-Step Process

[1] Conception

[a] Definition

[b] Scientific Certainty Not Required

[c] Corroboration

[d] Importance of Conception

[2] Reduction to Practice

[a] Actual Reduction to Practice

[b] Constructive Reduction to Practice

[B] The Reality

§8.03 Joint Inventors

[A] Statutory Basis

[B] Who Qualifies as a Joint Inventor?

[1] Conception as the Touchstone

[2] Quality of the Contribution

[a] "Not Insignificant in Quality"

[b] Contribution of an "Essential Element"

[C] Burden of Proof and Standard of Review

[D] Decisions Denying Joint Inventorship

[E] Decisions Finding Joint Inventorship

[F] The Impact of Inventorship on Ownership

§8.04 Correction of Inventorship

[A] Correction of Inventorship in Pending Patent Applications

[B] Correction of Inventorship in Issued Patents

[1] Section 256 Actions Generally

[2] Standing Requirement for Section 256 Actions

§8.05 Derivation

[A] Derivation Defined

[B] Derivation Defense in Patent Litigation

[1] Generally

[2] Agawam (U.S. 1868)

[3] Derivation Requires Proving Earlier Conception of Entire Invention as Claimed

[C] Derivation-Related Proceedings in the USPTO

[1] Derivation as an Issue in Interference Proceedings [Pre-AIA]

[2] Derivation Proceedings Under the America Invents Act of 2011