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Antitrust Issues in Intellectual Property Law, Second Edition
35 U.S.C. Section 101 establishes patent law, allowing inventors to obtain patents for new and useful processes, machines, or compositions of matter. Inventorship involves determining contributors to an invention's conception. Errors in naming inventors can lead to patent invalidity. This webinar explores whether inventor-naming errors should affect patent enforceability.
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Closed Captioned.
"Whoever invents or discovers" is permitted to seek and secure a patent under section 101 of the patent statute. Applying the statute, however, can require inventorship determinations that are both opaque and subjective. Inventing itself is characterized as a mental act, one dependent upon completing "conception" of what is claimed, with joint inventorship depending upon a "not qualitatively insignificant contribution" to the completed conception. Courts have referred to such assessments as "one of the muddiest concepts in the muddy metaphysics of the patent law." Against this judicial backdrop, the consequence of even the most innocent inventor-naming mistake can be draconian: patent invalidity, even where the naming error is inconsequential to the ownership of a patent that otherwise would be entirely valid.
This webinar brings together thought leaders to consider proposals that would eliminate inventor-naming errors as basis for unpatentability or patent invalidity, as well as limit patent unenforceability on inventor-naming grounds to the circumstance where corrected inventorship is necessary to correct patent ownership. A third proposal would require "accounting" among joint owners for any use of a patent invention undertaken prior to a correction of ownership-changing joint inventorship.
Corey Salsberg, Gordon T Arnold, Madhulika Vishwanathan, Robert W Bahr, Rochelle Cooper Dreyfuss
PT2405UPLOLC
90
5/9/2024 12:00:00 AM
Publications | Book
Antitrust Issues in Intellectual Property Law, Second Edition
Publications | Book
What is a Patent, Fourth Edition
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A Comprehensive Patent Practice Form Book: A Practitioner's Guide to Administrative Domestic and International Application Procedure
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Events | Webinar
How Far Can, And Should, USPTO Rulemaking Proceed in Addressing Issues of Double Patenting? [CC]
CLE 90 min
The webinar will explore proposals for reforming OTDP law based upon USPTO rulemaking efforts, including the recent proposal of by the Office that "terminal disclaimers" should include a disclaimer o…
Jun
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Events | Webinar
Recrafting 35 U.S.C. 112(f) to Preserve Validity of Claims Containing Functional Terminology [CC]
CLE 90 min
This webinar will explore whether 35 U.S.C. Section 112(f) should be applied when--and only when--a claim containing functional elements would otherwise be held invalid.