Invention Disclosure Records
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1 Invention Disclosure Records Are they answering the questions you re asking? David G. Burleson November 12, 2010
2 How information about the invention is communicated to the attorney -- INDEPENDENT INVENTOR
3 How information about the invention is communicated to the attorney -- CORPORATION Technical staff Parent company legal Technical supervisor Parent company tech. Technical management Business management Legal liaison Corporate legal staff Patent review committee Outside counsel
4 How information about the invention is communicated to the attorney -- CORPORATION Technical staff Parent company legal Technical supervisor Parent company tech. Technical management Business management Legal liaison Corporate legal staff Patent review committee Outside counsel
5 How information about the invention is communicated to the attorney -- CORPORATION Technical staff Parent company legal Technical supervisor Parent company tech. Technical management Business management Legal liaison Corporate legal staff Patent review committee Outside counsel
6 Attorney-Client Privilege? United States v. United Shoe Machinery Corp. Asserted holder is actual or prospective client of Member of the bar (or a subordinate) acting in capacity as lawyer Communication made outside presence of third parties and for primary purpose of securing legal opinion or service
7 Attorney-Client Privilege? Jack Winter (N. Dist. Cal., 1970) Patent attorney as conduit Most/all Information ultimately disclosed
8
9 Attorney-Client Privilege? In re Spalding Sports Worldwide, Inc. (Fed. Cir. 2000) District court ordered production of invention disclosure record Appeal mandamus Substantive issue Fed. Cir. law applies Inclusion of technical information irrelevant Communication made outside presence of third parties and for primary purpose of securing legal opinion or service
10 Attorney-Client Privilege? In re Spalding Sports Worldwide, Inc. (Fed. Cir. 2000) Holding: a privileged communication [if] provided to an attorney for the purpose of securing primarily a legal opinion, or legal services, or assistance in a legal proceeding Subsequent cases have extended privilege to other prosecution-related documents High water mark?
11 Invention Disclosure Forms Common contents Tech. Bus. Law Inventor name(s)
12 Invention Disclosure Forms Common contents Tech. Bus. Law Inventor name(s) Title
13 Invention Disclosure Forms Common contents Tech. Bus. Law Inventor name(s) Title Project number/name
14 Invention Disclosure Forms Inventors/Contributors Who is an inventor? One who contributes to the conception of a claimed invention Pair of hands exclusion Who gets named on disclosure forms? Substantial contributors Authorship standard
15 Invention Disclosure Forms Inventors useful information Home address (city/state) Citizenship Title
16 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Keywords
17 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Keywords Previous submissions
18 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Keywords Previous submissions Development status
19 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Keywords Previous submissions Development status Ownership factors
20 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Proprietary mat l used?
21 Invention Disclosure Forms Evaluation aids Tech. Bus. Law Proprietary mat l used? Search results / prior art
22 Invention Disclosure Forms Description of the invention Summary Distinguishing statement Detailed description (examples) Draft claim Try to draft an independent patent claim that contains all of the features of your invention you believe may be necessary to overcome the prior art of which you are aware (this is merely for the purpose of conveying/understanding the scope of what has been invented). Please consider various types of claims (e.g., product, process, apparatus). Exemplary format: We claim a (product, process, apparatus) for (an intended purpose), including (elements, steps, components).
23 Invention Disclosure Forms Evaluation Position of invention w/in business (core, extension, or tangential business) Position of invention in product line (basic, strategic, or conceptual) Patent protection (broad, narrow, or defensive publication)
24 Invention Disclosure Forms Memorialization Signature& date Witness(es) Notarization Memorialization relates to proving date of invention (interference) We don t design procedures based on the exception.
25 A brief word about inequitable conduct
26 Therasense v. Becton Dickinson Amici briefs PhRMA BIO IPO USPTO Proper std. for materiality but for but for but for Rule 56
27 Therasense v. Becton Dickinson Amici briefs PhRMA BIO IPO USPTO Proper std. for materiality but for but for but for Rule 56 Materiality-Intent balance No No Modify Restate
28 Therasense v. Becton Dickinson Amici briefs PhRMA BIO IPO USPTO Proper std. for materiality but for but for but for Rule 56 Materiality-Intent balance No No Modify Restate Infer intent? No No No No*
29 Therasense v. Becton Dickinson Amici briefs Eli Lilly: Materiality might be able to be inferred from intent, but not the converse J&J + P&G: Separation of powers, scire facias 22 IP firms: Time-of-action consideration
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