Table of Contents
Inventorship
"Inventor" limited to natural persons (posted 10/02/22)
On Aug. 5, 2022, the Fed. Cir., in Thaler v. Vidal, affirmed the PTO's holding that the Patent Act defines “inventor” as human beings. Because the Patent Act expressly provides that inventors are “individuals,” that term, as a noun, ordinarily means human being, then inventors must be human beings.
Federal Circuit construed inventorship "error" broadly in post-AIA statute (posted 08/23/21)
AIA amendments to 35 U.S.C. § 256:
(a) CORRECTION. – Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.
(b) PATENT VALID IF ERROR IS CORRECTED.– The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.
August 28, 2020: In Egenera, Inc. v. Cisco Systems, Inc., Cisco argued that, when Congress removed [“without deceptive intent”], it was meant to harmonize “error” with what Cisco views as its plain meaning–one that excludes intentional inaccuracy. The court rejected this argument because “it is contrary to the text of § 256, the structure of the AIA, and the AIA's legislative history.” The court further stated, “We hold that the AIA did not narrow the meaning of 'error.' Accordingly § 256 does not exclude 'considered acts,' or even 'deceptive intention, from the meaning of 'error.'”
The court noted: “Indeed, § 256 is a savings provision, functioning to prevent invalidation when correction is available. It is the inequitable-conduct rules that provide a safety valve in the event of deceit.”
The court notes in footnote 4, “through the AIA, deceptive-intention language was removed from the reissue provision,, 35 U.S.C. § 251, as well as the analogue of § 256 that applies to patent applications, 35 U.S.C. § 116. The § 102(f) improper-inventorship invalidity provision was also removed.” And newly established derivation proceedings provide for correction of named inventors.“ With respect to “legislative history,” the court cites, in footnote 5, 157 Cong. Rec. S1378, where Senator Kyl says that ”[e]liminating the various deceptive-intent requirements moves the U.S. patent system away from the 19th century model that focused on the patent owner's subjective intent, and towards a more objective-evidence-based system that will be much cheaper to litigate and more efficient to administer.“
- Bradley M. Krul, The 'Four Cs' of Joint Inventorship: A Practical Framework for Determining Joint Inventorship, 21 J. Intell. Prop. L. 73 (2013). (Cached - Private)
Australian judge rules in favor of AI inventor (posted 08/02/21)
In Thaler v Commissioner of Patents, an Australian judge ruled that an invention created by an artificial intelligence called “DABUS” should have been granted by the Australian patent office. The ruling was based on the construction of the term, “inventor” which was not defined in the statute. Rather than rely on dictionary definition as did the Deputy Commissioner of Patents, Judge Beach reasoned “I need to grapple with the underlying idea, recognising the evolving nature of patentable inventions and their creators. We are both created and create. Why cannot our own creations also create? We are both created and create. Why cannot our own creations also create?”
The The judge further reasoned as follows:
In summary and for the following reasons, in my view an artificial intelligence system can be an inventor for the purposes of the Act. First, an inventor is an agent noun; an agent can be a person or thing that invents. Second, so to hold reflects the reality in terms of many otherwise patentable inventions where it cannot sensibly be said that a human is the inventor. Third, nothing in the Act dictates the contrary conclusion. It follows that I reject the Deputy Commissioner’s determination and the Commissioner’s position before me.
According to law360, this is the first time in the world that a jurist ruled that an AI-developed invention can qualify for patent protection.
Inventorship presumed correct
In Meng and Hor v. Chu, the Federal Circuit held that ”[b]ecause issued patents are presumed to correctly name their inventors, the burden of proving nonjoinder of inventors is a 'heavy one,' which must be demonstrated by clear and convincing evidence.“ Quoting Symantec Corp. v. Computer Assoc s. Int'l, Inc., 1) the court added ”[a]n alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony“ In this case, collaborators Meng and Hor failed to adequately corroborate allegations that they contributed more than that of a person of ordinary skill to the idea of completely substituting Gadolinium for Yttrium in developing high temperature superconducting material and should therefore be added as inventors to U.S. Patents 7,709,418 and 7,056,866.
Fed. Cir.: You're not an inventor if your contribution was "exercise of ordinary skill" (03/05/09)
In Nartron Corp. v. Schukra U.S.A., the Federal Circuit held on appeal from Summary Judgment that a person is not an inventor when the “contribution . . . was the exercise of ordinary skill in the art.” In addition, the court held that the person's contribution did not rise to the level of “inventor” because his contribution “was insignificant when measured against the full dimension of the invention of [the] claim” because (1) the specification only mentions the contribution once in a twenty-column patent, (2) refers to it as background, (3) does not discuss or show in drawings structural details, (4) does not describe the physical characteristics of the contribution, and (5) the contribution “is not, and could not be, . . . anything but obvious.”
Fed. Cir. Rules On Inventorship (01/14/07)
In Stern v. Trustees of Columbia University, a medical student who assisted a patent holder in testing procedures related to the patented technology was denied “inventor” status.
- Brief Summary, MP3 of decision
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