INVENTIVE STEP

In the US, patents must name the inventors of the claims of the patent.  Any individual who contributed to the conception of the invention recited in a single claim of the patent must be named as an inventor.  If the proper inventors are not named, the paent can be declared invalid.  In addition, if the improper addition or exclusion of a true inventor is done with deceptive intent, the patent can be unenforceable due to inequitable conduct.

What may be of greater significance, however, is the rights acquired by each true inventor.  Unless the inventors have assigned their rights to another entity, or are under and obligation to do so (such as as a condition of employment), each inventor of even one claim of the patent has an undivided ownership right in the patent.  As an owner, each true inventor has the right to assign, license, or otherwise dispose of his or her rights in the invention without the permission or consent of the other owners or inventors.

Falana v. Kent State University

Dr. Falana was hired by Prof. Seed of Kent State to synthesize chiral organic compounds for a research project.  The compounds were intended for use in LCD displays.  After developing some appropriate compounds, Dr. Falana left to take another position.  The University (and a related company) filed a patent application naming Prof. Seed and several others as inventors, but not naming Dr. Falana.  Prof. Seed, Dr. Falana, and the other inventors later published a journal article on the invention.

After the patent issued, Dr. Falana inquired as to why he was not named as an inventor in the application.  When he didn’t receive a satisfactory response, he filed suit against the owners and inventors of the patent asking the court to order the PTO to add his name to the patent as an inventor.  The district court determined that he did qualify as an inventor and issued the requested order.  The case then moved to the Federal Circuit.

The question before this court is whether a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound.

The defendants argued that that the conception of the method of making the compound was irrelevant to the question of inventorship of the compounds themselves.  The court disagreed.

Where the method requires more than the exercise of ordinary skill, however, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. This case is simply the application of the well-known principle that conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it. Accord-ingly, this court holds that a putative inventor who envi-sioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.

The defendants tried another tactic, arguing that the particular commercial compound that embodies the claimed invention was not synthesized until after Dr. Falana left the position so he could not have been an inventor of that compound.  The court found this argument to be inapposite.  The claims were broader than the particular commercial compound.  The relevant inquiry is whether Dr. Falana contributed to the conception of the broad genus recited in the claims, not the particular compound that is used commercially.

Perhaps if the claims had been narrowly directed to the commercial compound, Dr. Falana would not be a proper co-inventor.  This is another issue to ponder when preparing patent applications and strategies for drafting claims.

The Federal Circuit ruled today that the claimed method of monetizing and distributing copyrighted products over the Internet is a patent eligible process in Ultramercial, LLC v. Hulu, LLC.

At issue in the case was claim 1 of U.S. Patent No. 7,346,545:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

The district court had dismissed the infringement action holding that the claim was not directed to patent-eligible subject matter.  The Federal Circuit acknowledged that it has not provided a definitive rule that a claim be construed by the court prior to the patent eligibility determination, but strongly suggested that it may be helpful for courts to do so.

After once again reviewing the case law on patent eligibility from the Federal Circuit and Supreme Court, Chief Judge Rader, writing for the panel, easily found the claim to be a “process” within the meaning of the Patent Act and thus falls within a § 101 eligibility category.  The only issue is whether the claim falls within the abstract idea exception.

In its analysis of whether the claim is directed to an abstract idea, the court gave weight to the patent’s purported improvement of existing technology and that it invokes computers and applications of computer technology.  The claim does not merely recite the abstract idea that advertisement can be used as a form of currency, but relates to a practical application of this idea.  The various steps likely require intricate and complex computer programming, and specific application of the Internet and cyber-market environment.

Although the claim may not meet the other requirements for patentability under the Patent Act (novelty, non-obviousness, enablement, written description, etc.), it is not ineligible for patenting under § 101.