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ME 554 Lecture 3

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27 views13 pages

ME 554 Lecture 3

Uploaded by

Anton
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
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Intellectual Property Basics

(continued)
ME 554 Lecture of
9/25/24

D.H.R. Sarma, Ph.D.


SHOW PATENT
• Title
• Inventors
• Assignee
• Specification
• Drawings (If needed)
• Claims
• Abstract
Accessing Patent Documents

• Accessibility by public:
• All issued patents (remember the contract between public and
inventor/patent owner—disclosure in return for (limited)
monopoly)
• Patent applications, except:
• Provisionals (that are not referenced in a published patent application)
• Patent applications filed < 18 months since earliest priority date
• Patent applications under a secrecy order or filed with a non-publication
request
HOMEWORK
• Go to internet and find an issued patent
• Google patents, freepatentsonline etc.
• Look carefully…do not submit a patent application
• Find an issued US Patent, issued after year 2010

• Determine the type of patent:


• Process, composition, apparatus, method , product, article, etc.

• Submit by e-mail to [email protected] AND


[email protected] )as PDF file named (If you already
submitted to Sarma, no need to redo)
Lastname_FirstName_Type.pdf
Example: Sarma_Dwadasi_composition.pdf
New Due Date: October 4
• Just look over its construction and format, read a little if you
can
Inventorship
Chapter 2137.01, II. of the MPEP (Manual of Patent Examining
Procedure).

The definition for inventorship can be simply stated: “The


threshold question in determining inventorship is who
conceived the invention. Unless a person contributes to the
conception of the invention, he is not an inventor. … Insofar as
defining an inventor is concerned, reduction to practice, per se, is
irrelevant [except for simultaneous conception and reduction to
practice, Fiers v. Revel, 984 F.2d 1164, 1168, 25 USPQ2d 1601,
1604-05 (Fed. Cir. 1993)]. One must contribute to the
conception to be an inventor.”
Inventorship

• The inventor is a person who conceived the claimed


invention
• NOT one who merely reduced the invention to practice
• Unless he adds inventive aspects and claims

• Inventorship determined by contribution to claims


• Patent practitioners and companies/corporations utilize claim
charts to determine inventor-claim correspondence
Joint Inventorship

• Claimed invention is conceived by two or more persons


jointly
• even though they:
• did not work on the invention together at the same time
• did not make the same type or amount of contribution
• did not make a contribution to the subject matter of every claim
Identification of Inventors
• In a nonprovisional (to be discussed later) patent
application, a oath or declaration is required by each
inventor identified by his or her legal name, mailing
address and residence (if different from mailing address)
• Error in inventorship can be corrected
• While the application is pending
• After the patent issues
Ownership of a patent
• Only the inventors or those who derive title from the inventors can
own a patent or a patent application
• The inventors are the owners unless and until they transfer their
interest to another (e.g. employer)
• Each joint inventor or owner may make, use or sell the invention
• Without consent of the other inventors
• Without accounting to the other joint inventor or inventors
• Each joint inventor or owner owns an equal undivided interest in the
invention, application and patent, absent any express agreement to
the contrary, regardless of any disparity in the inventive contribution
• Joint owners must join in
• Prosecuting an application for patent
• Suing for infringement
Patents

• Patent rights, just like all other


intellectual property rights, only
function to exclude others, or
provide for a royalty. They do not
provide any inherent right of use.
Specification
USC 112 (a) Requirements

• [1] A written description of the invention, and of


the manner and process of making and using it,

• [2] in such full, clear, concise, and exact terms as to


enable any person skilled in the art to which it
pertains, or with which it is mostly connected, to
make and use the same , and

• [3] shall set forth the best mode contemplated by


the inventor of carrying out his invention

Copyright 2015, 2016. Purdue Research Foundation.


Enablement
TEST
• Would a person of ordinary skill in the art (reading
the specification) be able to make and use the
claimed invention
without undue experimentation
Three criteria to be satisfied for
each claim

• Description

• Enablement

• Best mode

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