[Webinar] Patent Inventorship: Best Practices for Determination and Correction – May 7th, 1:00 pm – 2:30 pm EDT | Strafford

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

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

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.

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?

FACULTY

CLE Credits by State

This 90-minute webinar is eligible in most states for 1.5 CLE credits.
SEE CLE STATE MAP >>

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