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Patent Inventorship: Best Practices for Determination and Correction

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

An encore presentation with Live Q&A.

A 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Thursday, July 18, 2024 (Today)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE course will guide patent counsel in identifying and determining inventorship and offer best practices for correcting errors regarding inventorship. Our experienced panel will provide perspectives gained from working with the AIA since its passage and outline lessons from recent court decisions.

Description

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

The Federal Circuit addressed inventorship on collaborative projects. When determining joint inventorship, the court confirmed that the parties are not required to work on the invention physically together or contribute equally. Blue Gentian, LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1365 (Fed. Cir. 2023). Further, the court stated joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher's contribution. Dana-Farber Cancer Inc. v. Ono Pharm. Co. Ltd. (Fed. Cir. 2020). But joint inventorship does require that the contribution to the invention is significant. HIP, Inc. v. Hormel Foods Corp., 66 F.4th 1346 (Fed. Cir. 2023)

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

Patent counsel must learn to properly conduct an inventorship determination to avoid complications that result from 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 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 inventorship determination?

An encore presentation featuring Live Q&A.

Faculty

Bosch, Michele
Michele C. Bosch

Partner
Finnegan Henderson Farabow Garrett & Dunner

Ms. Bosch leads the firm’s Chemical and Metallurgical practice group. Her practice includes many areas of...  |  Read More

Hanson, Mark
Mark Hanson

Of Counsel
Finnegan, Henderson, Farabow, Garrett & Dunner

Mr. Hanson has more than a decade of experience working with both startups and larger companies on the analysis,...  |  Read More

Masters, James
James T. Masters, Ph.D.

Attorney
Finnegan Henderson Farabow Garrett & Dunner

Dr. Masters focuses on patent prosecution, opinions and counseling, patent mapping, and patent litigation in the...  |  Read More

Murphy, Amanda
Dr. 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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You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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