BasicPatent-Stacy.doc - Basic Patent Law Claims and Claim...

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Basic Patent Law Claims and Claim Drafting Format Opening preamble A transition phrase A body Types Method claims - describe a way to do a process Apparatus claims - describe an instrument or object Articles of manufacture Composition of matter Preamble Objective: states the general use or purpose of the invention The preamble can limit the claim Transition Objective: indicates the nature of the claim as either open or closed in composition Ex: Comprising; open; invention includes but is not limited to the elements listed in the claim; the minimum elements required Ex: Consisting; closed; invention is limited to the elements listed in the claim; 1:1 element matching General Overview Claims are either independent (stand alone) or dependent (refer back to a prior claim) Different claims within the same patent can have different conception dates; different elements within the same claim cannot Conditions for a Valid Patent Inventorship - 116 Definition - a person who contributed to a definite and permanent idea about an element of the claim that is ready for reduction to practice (Ethicon) Reduction to practice alone does not constitute inventorship; Must have conception Only need to conceive of one element of a claim to be an inventor Determining inventors Prosecution: make a fair and reasonable determination generally based on interview Litigation: Rule of Reason - "court must consider corroborating evidence in context, make necessary credibility determinations, and assign appropriate probative weight to the evidence"; determined by clear and convincing evidence - think 90% What is on the patent is presumed to be correct Standing
All inventors, assignees, or exclusive licensees must be joined to bring suit on a patent Prevents serially suits Emphasizes serious nature of suits Inconsistent - can license without other owners but cannot sue without others Joint Inventors - 116 (Kimberly Clark Corp) Do not need to physically work together Do not need to contribute equally or to every claim Do need to collaborate with each other in some fashion Common direction, common work product, etc are considered when determining collaboration Joint ownership rights - can license independently, etc Incorrect Inventorship - 256 Naming incorrect inventorship results in invalidation of the patent You can correct inventorship through a number ways Court must order correction inventorship IF the party asks for inventorship to be corrected - 256 Notice to all parties concerned and hearing Must not be due to deceptive intent Clear and convincing evidence of inventorship error Problems with listing an "iffy" inventor If you don't list as a co-inventor, you run the risk of invalidation If you list as a co-inventor, they may have an ownership interest in the patent Losing inventorship If you challenge inventorship and lose, the patent is valid per se Date and Priority of Inventorship Priority - Basic Rule The US is a first-to-invent system Conception TEST: whether the inventor had an idea that was definite and

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