Patent Inventorship: Best Practices for Determination and Correction

Distinguishing Between Inventor and Contributor; Navigating Joint Inventorship, Disclosure of Ownership, Real Party in Interest

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, February 27, 2018

Recorded event now available

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Program Materials

This CLE webinar will provide guidance for patent counsel on identifying and determining inventorship and will offer best practices for correcting errors regarding inventorship. Our experienced panel will offer perspectives gained from working with the AIA since it was passed—and outline lessons from recent court decisions.

Description

The question of inventorship is often difficult, particularly when scientists include all parties involved with an invention on the disclosure form. Patent counsel must determine which person(s) is actually an inventor and how each contributed.

If errors are discovered later, the patent application may need to be changed after it is filed. Counsel can correct an application while it's pending or after the patent is granted, so long as any error in listing the inventors was without deceptive intent.

Patent counsel must learn to properly conduct an inventorship determination to avoid complications that result from an incorrect or incomplete identification and determination. Counsel can leverage lessons and practical experiences from working with the AIA from our panel of experienced patent practitioners.

Listen as our authoritative panel explains determining inventorship, naming the applicant, and managing new forms and procedures related to inventorship. The panel will review the duty of candor, best mode as applied to the inventors, and recent court treatment. The panel will also offer their perspectives and guidance for correcting or changing inventorship.

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Outline

  1. Inventorship determination
    1. Sole vs. joint
    2. Document review
    3. Questions to ask to determine inventorship
    4. Naming applicant
    5. Court treatment
    6. Impact of AIA (or lack thereof)
  2. Real party in interest
  3. Correcting inventorship
    1. Pre vs. post filing
    2. Provisional application
  4. Best practices

Benefits

The panel will review these and other key issues:

  • What key information does counsel need to determine inventorship?
  • What are the steps for counsel when inventorship must be corrected?
  • What is the AIA’s impact on an inventorship determination?

Faculty

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

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