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2. U.S. Patents: InventorshipGary J. Speier+001-612-359-3261gspeier@SLWip.com

3. Significance of Inventorship Determination: Why be concerned with Inventorship? • Absent an obligation to assign an invention, title to a U.S. patent resides separately with each joint inventor • Inventorship dispute is a thinly veiled attempt to obtain or void patent title • Incorrect named inventors (misjoinder or nonjoinder) with deceptive intent --> inequitable conduct, patent invalidity and unenforceable • Stakes are enormous

4. The Inventorship Inquiry • Patent statute requires that a patent application be filed in the name of the inventor or inventors (35 U.S.C. §§ 111, 115, and 116) • Policy underlying inventorship is based on the Constitutional recognition of patents as an intellectual property right -- the Constitutional recognition of patents has been limited to allow only the first to invent to receive a patent from the United States • Ensures that the inventor is being rewarded with a patent from the public who is benefiting from the inventor's early disclosure of an invention in a patent • Inventorship (U.S. Patent) ≠ Authorship (scientific journal)

5. The Inventorship Inquiry (cont.) • Test for inventorship is always the same whether the test is being applied prior to the filing of a patent application or in order to resolve an inventorship dispute • The inventorship test applies equally to sole inventorship and joint inventorship situations. • Inventorship cannot be determined, however, without evidence: evidence of conception of the invention, and evidence of the invention

6. Conception is the Touchstone of an Inventorship Inquiry • Conception is the touchstone of inventorship, the completion of the mental part of invention (Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223, 1227 (Fed. Cir. 1994); Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002)) • Conception is a two-step procedure • First, conception must “exist” and then conception must be “complete” • The person(s) involved in both steps are inventors

7. Conception (cont.) • Conception exists when a “definite and permanent idea of an operative invention including every feature of the subject matter sought to be patented is known” (Coleman v. Dines, 754 F.2d 353, 359 (Fed.Cir. 1985); Trovan, 299 F.3d at 1302) • Conception is complete when one of ordinary skill in the art could construct the apparatus, perform the process, or make the composition without unduly extensive research or experimentation. Trovan, 299 F.3d at 1302 (citing Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994)) • Invention conception may be complete even though experimentation continues (Bac v. Loomis, 252 F.2d 571, 577 (CCPA 1958))

8. The concept contributed must be patentable • The conception of an invention -- as a whole -- may consist of the conception of many elements of the overall invention by one or more people • Inventor conception determination, therefore, requires determining what is inventive • The contribution of only obvious elements or improvements to a claimed invention adds nothing to the invention and, one who contributes only obvious elements is not an inventor (Sewall, 21 F.3d at 415-16; Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998); Eli Lilly v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004))

9. Conception occurs before reduction to practice • Invention reduction to practice occurs in one of two ways: (1) Constructive Reduction To Practice -- filing a patent application describing and claiming the invention sufficiently to teach one of skill in the art how to practice the invention; or (2) Actual Reduction To Practice -- Sufficiently developing and testing the invention to show that it will work for its intended purpose Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed. Cir. 1987); Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001) • One who aids only in reducing a conceived invention to practice can never be an inventor

10. Simultaneous Conception And Reduction To Practice • Extremely rare • Happens when a shotgun approach is used to solve a problem: If one randomly chooses 1000 compounds and tests them as insecticides against different insects in different amounts and discovers that a specific dose of one compound works against a specific insect, then both conception and reduction to practice occur upon identifying the one compound which worked as an insecticide. See, e.g., Alpert v. Slatin, 305 F.2d 891 (CCPA 1962) If the same 1000 compounds were evaluated by a person who then selected 40 as insecticide candidates against a certain insect for a reason understood by the inventor, and which could be explained to one of skill in the art, then the selection of the 40 promising compounds would be the invention conception. See, e.g., Burroughs Wellcome, 40 F.3d at 1228

11. Conception does not exist where viability of the concept is uncertain • Conception is not complete if a subsequent course of experimentation, especially experimental failures, reveals uncertainty that so undermines the specificity of the inventor’s idea, that it is not yet a definite and permanent reflection of the complete invention as it will be used in practice. Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1207 (Fed. Cir, 1991) • If the inventor's conception is faulty, there can be no invention because conception cannot be certain • Lack of problems with (or difficulties with) subsequent research is evidence of conception (or lack thereof). Burroughs Wellcome, 40 F.3d at 1229

12. Conception may be Joint • Joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. 35 U.S.C. § 116 • About 80% of all U.S. Utility Patents are issued to joint inventors • Most inventorship questions arise in the context of joint inventorship disputes (where a person has allegedly been nonjoined or misjoined as a patent inventor) • Joint invention requires that each inventor individually or together conceive the invention of at least one claim of a patent or patent application • Ultimately, the question of joint inventorship focuses on what invention was conceived by whom and when

13. Joint Conception May Exist Where: • There were joint labors (Monsanto, 269 F Supp. at 824; see also Eli Lilly and Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004)) • Small contributions are made by one inventor, and large contributions by the other (Shields v. Halliburton Co., 493 F. Supp. 1376, 1385 (W.D. La. 1980); 35 U.S.C. § 116 (2005)) • The inventors make independent contributions to the conception • Individual claims may be invented by different persons (Amp, Inc. v. Fujitsu Microelectronics, Inc., 853 F. Supp. 808, 819 (M.D. Pa 1994); 35 U.S.C. § 116 (2005)) • Invention conceived in stages via organized R & D efforts (General Motors Corp. v. Toyota Motors Co., 667 F.2d 504, 506 (5th Cir. 1981))

14. Joint Conception Will Not Exist Where: • One contributes an obvious element to the invention (Erie Technological Prods, v. Die Craft Metal Prods, 461 F.2d 5, 6-7 (7th Cir. 1972)) • One merely suggests an idea (Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980-81 (Fed. Cir. 1997); Garrett Corp. v. United States, 422 F.2d 874, 880-81 (Ct. Cl. 1970), cert. denied, 400 U.S. 951 (1970) • One only follows instructions (Mineral Separation, Ltd. v. Hyde, 242 U.S. 261, 270 (1916); Engelhardt Minerals and Chemicals Corp. v. Anglo American Claus Corp., 586 F.Supp. 435, 445 (M.D. Ga. 1984)) • One explains how or why the invention works (GAF Corp. v. AMCHEM Prods., 514 F. Supp. 943, 972 (E.D. Pa. 1981))

15. Joint Conception Will Not Exist Where: • One participates in consultations prior to or after conception (O'Reilly v. Morse, 56 U.S. 15(How) 62 (1853); Ethicon, 135 F.3d at 1460) • One adopted derived information • One only acts as a salesman, showing an available product and explaining how it could and might be used (Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d at 981) • Where conception is nonconjunctive -- where conception occurs before another became involved with the invention (Credle v. Bond, 25 F.3d 1566, 1574 (Fed. Cir. 1994) (there can be no joint invention where dates of conception and reduction to practice of each inventors contribution do not overlap))

16. The Inventorship Determination • Identifying inventorship in a patent application is typically a routine ministerial task left to one of the “identifiable” inventors or to a patent liaison person • The patent attorney usually accepts the inventorship determination without question or verifies inventor status via a cursory leading-examination of a primary inventor • Inventorship never becomes an issue with the vast majority of patents and patent applications

17. Inventorship Correction • Non-fraudulent correction of inventorship is allowed during the pendency of a patent application, and after a patent has issued • The patent applicant must prove: (1) The omitted person was a true joint inventor; (2) the joint inventor was omitted by error; and (3) the omission was without deceptive intent • The proof is the same for removing a misjoined inventor, in which case, proof that the added person was not a true joint inventor, and that the misnamed inventor was named by error without deceptive intent would be necessary

18. Inventorship Correction (cont.) • During the pendency of a patent application (controlled by 35 U.S.C. §116, ¶ 3) no longer required diligence • After patent issues (controlled by 37 C.F.R. § 1.324) • Once a patent issues, the patent inventorship can be corrected by the patentee by petition to the U.S. Patent Office (35 U.S.C. § 256) • Alternatively, a Federal District Court (35 U.S.C. § 256) can be asked to add a nonjoined inventor to a patent, or to remove a misjoined inventor from a patent

19. Correcting Patent Application Inventorship The amendment of inventorship is accomplished by: (i) filing a request to correct the inventorship that sets forth the desired inventorship change; (ii) include a statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part; (iii) include an new oath or declaration signed be each of the actual inventors; (iv) pay the fee required by 37 C.F.R §1.17(h); and (v) obtain the written consent of any assignee. 37 C.F.R § 1.48(a)

20. Practice Tips • Identifying the “invention” must precede identifying inventors. Thus, the first task in any inventorship investigation is to identify the “invention.” • Although diligence is not required for questions of inventorship of patents or patent applications that are not involved in an interference proceeding, to be prudent and avoid the appearance of impropriety, all inventorship claims should be investigated with diligence

21. Practice Tips (cont.) • While drafting a patent application, the patent practitioner should investigate claim inventorship. The following questions should provoke answers that will aid the patent practitioner in identifying the application inventors. 1. What problem is solved by the invention? 2. When did you know that you had solved the problem? 3. Who helped solve the problem? 4. How did each person help solve the problem? 5. Did all persons equally help solve the problem?

22. Practice Tips (cont.) • Proof of error without deceptive intent is accomplished with affidavits and documents establishing as many of the following facts as possible: (1) The circumstances surrounding the initial determination of inventorship, including the date or dates when inventorship was discussed and the factors considered in the original determination of inventorship; (2) establishing how the error in inventorship was discovered including explaining who first discovered the misjoinder or non joinder error, when the error was discovered, and details of any investigations to establish whether an inventorship error had occurred including when the investigation took place and who was consulted; and (3) identifying the proper application inventors including identifying the contribution made by the non joined inventor or misconception about the contribution made by the misjoined inventor and including any laboratory data, drawings, reports, or other information which support the joinder or deletion of inventors from the patent or patent application.

23. Practice Tips (cont.) • Employers should file patent assignment with USPTO at earliest opportunity (avoid reliance upon deceased/uncooperative inventor) • “An ounce of prevention is worth a pound of cure” -- Benjamin Franklin

24. Thank you for your participation. Gary J. Speier+001-612-359-3261gspeier@SLWip.com For more information please visit :www.SLWip.com

25. Patent Subject Matter Eligibility James D. Hallenbeck +001 612 373 6938 jhallenbeck@slwip.com

26. Bilski v. Kappos • You have likely already received many communications regarding the decision in Bilski v. Kappos. My goal here is not to review the specific holding in Bilski, but to give you a practical discussion for determining patent subject matter eligibility. • I will review the steps Examiners have been instructed to utilize in making patent subject matter eligibility determinations with practice tips mixed therein. • I will conclude with a few observations and few warnings.

27. Patent Subject Matter Eligibility • The question of what is patentable begins with a query rooted in 35 U.S.C. § 101. • 35 U.S.C. § 101 • Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor....

28. Threshold Query • The query requires that each claim be considered as a whole, rather than dissecting the claim into old and new elements and then ignoring the presence of olds elements in the analysis. Bilski v. Kappos, 561 U.S. ____ (2010), slip opinion at 14-15 (citing Diamond v. Diehr, 450 U.S. 175, 188). • Thus, the question of subject matter eligibility is a threshold test and, unlike Europe and some other jurisdictions, does not involve any consideration of novelty, obviousness, or inventive step. • Once subject matter eligibility is determined, the other statutory sections for novelty and obviousness will be considered.

29. USPTO Guidance Post-Bilski • The USPTO provided guidance to examiners, and therefore also to applicants, in August 2009 and again in July 2010, for performing subject matter eligibility determinations. • 2 Step Process • 1. Is the claim directed to one of the four patent-eligible subject matter categories? • 2. Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes, substantially all practical uses (pre-emption) of a law of nature, natural phenomenon, or abstract idea, or is it a particular practical application of a judicial exception?

30. Step 1 • Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?

31. Step 1: Statutory Categories • From 35 U.S.C. § 101 • any… process, machine, manufacture, or composition of matter…. • These categories are to be given broad scope. Bilski v. Kappos, 561 U.S. ___, slip opinion at 4 (citing Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (“In choosing such expansive terms … modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws should be give broad scope.”).

32. Step 1: Machines, Manufactures, and Compositions of Matter • Machine • a concrete thing, consisting of parts, or certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. • Manufacture • an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand or by machinery. • Composition of Matter • all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders, or solids, for example. August 2009 Interim Patent Subject Matter Eligibility Examination Instructions, pages 1-2.

33. Step 1: Processes • The definition of a patent eligible process is where Bilski was decided. • Bilski had a few main holdings • Abstract ideas are not patent eligible; • The Machine-or-Transformation test is not the sole test for patent eligibility for process/method claims and the Federal Circuit is invited to develop other tests consistent with Supreme Court precedent and § 101; • “Section 101 … precludes the broad contention that the term ‘process’ categorically excludes business methods.” • Patent eligible processes are determined according the definition provided in 35 U.S.C. § 100(b): • The term ‘process’ means process, art, or method and includes a new use of a known process, machine, manufacture, composition of matter, or material.

34. Step 1 Exclusions • Examples of claims not directed to one of the statutory categories (process, machine, manufacture, or composition of matter) • Signals and carrier waves (e.g., computer readable medium defined to include transmitted signals); • Naturally occurring organisms; • Humans per se; • Contracts between parties; • A game defined by a set of rules; • A computer program per se; • A company.

35. Step 1: Both Statutory and Non-Statutory • Broadest reasonable interpretation of the claim • When a claim, read in light of what the specification would teach to one of average skill upon reading it, supports a reading that encompasses both statutory and non-statutory embodiments, the claim is not patent-eligible. • For example: • A claim is directed to a computer readable medium with instructions encoded thereon…. • The specification defines computer readable medium to include both storage mediums and transitory mediums, such as transmitted signals • Not eligible • Solution • Amend the claim to be limited to the “non-transitory” mediums

36. Step 2 • Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes, or substantially all practical uses (pre-emption) of a law of nature, mathematical formula, or a natural phenomenon, or is it a particular practical application of a judicial exception? • Product claims (machines, manufactures, compositions of matter) patent-eligible unless they recite a judicial exception. • If a judicial exception is recited, the claim is patent-eligible if it recites a practical application. • For example a product claim to magnetism is not patent-eligible, but a product claim that covers magnetism only with regard to door latches is patent-eligible

37. Step 2: Apparatus & System • A common issue today is with regard to system claims • If a claim recites a system, but fails to include tangible limitations, the claim is not limited to a practical application. • For example, A system comprising a payment module and an accounting module. • Solution • Add tangible limitations to the claim such as at least one processor, a memory device, a data storage device, a network interface device, etc.

38. Step 2: Processes • Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?

39. Step 2: Processes • Post-Bilski, we are unsure of what the full breadth of the available tests or factors are for patent eligibility. • We do know that the “Machine-or-Transformation” is one factor to consider, but it is not dispositive nor exclusive. • Thus, the Interim Guidelines for Determining Subject Matter Eligibility for Process Claims of July 27, 2010 were provided by the USPTO to these ends and provide examples of factors to be weighed in determining patent subject matter eligibility.

40. Step 2: Processes - Guidelines for Determining Subject Matter Eligibility • Evaluate the claim as a whole and weigh the relevant factors to determine: • if the claim is eligible; • if the claim is directed to an ineligible abstract idea, law of nature, or natural phenomenon or preempts all use thereof; or • if the claim is otherwise ineligible. • When weighing the factors and a determination of patent eligibility is made, the remaining factors need not be considered. At this point, the remaining statutory provisions for patentability are considered (i.e., §§ 102 novelty, 103 obviousness).

41. Step 2: Process Claims Factors Weighing Toward Eligibility • Recitation of a machine or transformation (either express or inherent). • Machine or transformation is particular. • Machine or transformation meaningfully limits the execution of the steps. • Machine implements the claimed steps. • The article being transformed is particular. • The article undergoes a change in state or thing (e.g., objectively different function or use). • The article being transformed is an object or substance. • Data being transformed is representative of a physical object or substance. • Although compliance with the Machine-or-Transformation test is not required, the test is a “useful and important clue” and “investigative tool” for determining patent eligibility of process claims.

42. Factors Weighing Toward Eligibility • The claim is directed toward applying a law of nature. • Law of nature is practically applied. • The application of the law of nature meaningfully limits the execution of the steps. • What this is really getting at is that your claim may include a law of nature, but it should be included in an element of the process working toward the purpose of the claim and not itself be the purpose of the claim.

43. Factors Weighing Toward Eligibility • The claim is more than a mere statement of a concept. • The claim describes a particular solution to a problem to be solved. • The claim implements a concept in some tangible way. • The performance of the steps is observable and verifiable.

44. Step 2: Processes Factors Weighing Against Patent Eligibility • No recitation of a machine or transformation (either express or inherent). • Insufficient recitation of a machine or transformation. • Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied. • Machine is generically recited such that it covers any machine capable of performing the claimed step(s). • Machine is merely an object on which the method operates. • Transformation involves only a change in position or location of article. • “Article” is merely a general concept (i.e., a contract).

45. Step 2: Processes Factors Weighing Against Patent Eligibility • The claim is not directed to an application of a law of nature. • The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature. • Law of nature is applied in a merely subjective determination (e.g., ways to think about or react to a law of nature). • Law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps.

46. Step 2: Processes Factors Weighing Against Patent Eligibility • The claim is a mere statement of a general concept. • Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. • Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. • The claim only states a problem to be solved. • The general concept is disembodied. • The mechanism(s) by which the steps are implemented is subjective or imperceptible.

47. Step 2: Processes Factors Weighing Against Patent Eligibility • Examples of general concepts include, but are not limited, to: • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing); • Basic legal theories (e.g., contracts, dispute resolution, rules of law); • Mathematical concepts (e.g., algorithms, spatial relationships, geometry); • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion); • Interpersonal interactions or relationships (e.g., conversing, dating); • Teaching concepts (e.g., memorization, repetition); • Human behavior (e.g., exercising, wearing clothing, following rules or instructions); • Instructing “how business should be conducted.”

48. Post-Bilski • Patent subject eligibility determinations post-Bilski for machines, articles of manufacture, and compositions of matter are essentially the same. • With regard to processes, multi-factor considerations are necessary. However, compliance with the Machine-or-Transformation is almost certainly likely to result in a claim being eligible.

49. Machine-or-Transformation Test A claimed process complies with the Machine-or-Transformation test when: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. But the machine or transformation must: • “impose meaningful limits on the claim’s scope” • More than plugging in the machine to an electrical outlet; • “not merely be insignificant extra-solution activity” • i.e., the machine or transformation must be central to the purpose of the claim.

50. Recommendations – other than Processes • If you are claiming machines, articles of manufacture, or compositions of matter, continue drafting claims as you did before. • However, be specific in your specification while describing various embodiments as to what the elements are, how they interrelate, and how they work together. • Utilize dependent claims to introduce these specific elements into the claims.