Inventions and Inventorship: Challenges and Complications

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 105-126

105

Each of us has a concept of an inventor . It may be a vision of  omas

Edison looking over his light bulb, or Samuel Popeil holding up his Pocket

Fisherman [1].  e pictures in our minds o en range from a team of scien-

tists and engineers to the lone dreamer tinkering away in his garage, trying

to come up with a product that will make him rich. Just as most people

have various concepts of inventors, the concept of an invention also di ers,

sometimes within a single individual.

A person may view an invention as a complicated but signi cant tech-

nological advancement or as a clever, but possibly useless, product from

an in- ight catalog. Sometimes people assign moral value to an invention,

judging it as either good or evil, or possibly both. John C. Garand ’s inven-

tion of the semiautomatic M1 ri e helped win World War II , likely saving

numerous American lives. However, as an instrument of war, the ri e has

brought death to countless others.

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Inventions and Inventorship :

Challenges and Complications

106 Patent Engineering

What is a Patent?

Many people have the mistaken impression that an issued patent is like

a government-issued award recognizing some kind of signi cant techno-

logical advance.  is impression is o en fed by advertisements that make

outrageous claims that generally run along these lines—“ is product is

so amazing and/or advanced that the United States government has recog-

nized it by awarding it a patent.”  is perception is quite common, espe-

cially among those who have not worked with patents before.

While it is true that a patent is a government-issued document regard-

ing a new technological solution , this does not mean that the solution

is either amazing or advanced—merely that it is new and non-obvious .

In this this chapter we will clarify what constitutes an invention , who an

inventor actually is, why patents are issued, and what they represent.

What is an Invention?

Let us  rst discuss what constitutes an invention . Many people might envi-

sion the cell phone as an invention of great signi cance . In fact, it is not a

single invention. In a search of the USPTO database for the terms “cellular ”

and “telephone ”, as used in the abstracts of issued patents , 3,150 individual

patents that had been issued as of April 8, 2014 were found.

 is means that, legally speaking, the cell phone is not a single invention

but, rather, a combination of many inventions —possibly thousands. Now,

are all of these patents used in, or are they of great signi cance to, the cell

phone? Probably not. Many of these inventions are of marginal signi cance

or may not be used at all. Others are very likely to be incremental improve-

ments, or represent advances in some of the existing enabling technology .

Still others may involve uses of cell phones rather than the cell phone itself,

or components related to a cellular phone. For example, US 8,923,524

describes an “ultra-compact headset” for use with a phone. What you may

think of as an “invention” is likely a whole collection of patents.

It is important to note that the value of a patent , as a legal document,

is determined by how much money someone else is willing to pay to have

rights to use the patented technology .  is is o en di cult to determine

at the time around the initial  ling of the application.  us, a patent that

covers the solution to a critical problem (e.g. the chemical process used to

produce instant silver halide photographs) may wind up being of nominal

value, whereas a patent covering more mundane enabling technology may

have a much greater value.