Who was John Montegu and what can he teach us about who can be named as an Inventor on our patent application?

As company patent counsel, we are frequently called upon to determine who is properly named as an inventor on a patent application according to the US patent laws when we prepare a patent application. It may surprise you when we as patent counsel add or sometimes even delete persons to the named inventors on a disclosure when we prepare a patent application. This can occur when we uncover facts during the disclosure meeting that we conduct prior to preparing the patent application.

But who is an inventor? Let’s look at the (unconfirmed) story of John Montagu, the 4th Earl of Sandwich:

As the story goes, Lord Sandwich was up late gambling with his friends one night. Not wanting to take a break from the gaming table, Lord Sandwich instructed his valet to bring him some meat tucked between two pieces of bread so that he could continue to hold his playing cards while eating.

Concerned about improving investment in technology in his realm, as well as paying some gambling debts, Lord Sandwich decides to commercialize his invention. He summons a patent attorney. But, who is properly named as an inventor on the patent application?

Under current US patent law, Lord Sandwich would be the sole inventor of the sandwich given these facts. He came up with ideas for solving the problem confronting him and he reduced his ideas to practice by giving his valet specific instructions describing how to make the object of his creation. The valet’s actions are simply that of an implementer.

Our cheeky example aside, the US patent laws take proper inventorship seriously. Incorrect inventors listed on a patent can be grounds for invalidating the patent altogether – a complete loss of the investment of time and resources in creating it! Inventors who are named on the declaration and assignment documents are each required to sign under the penalties of perjury.

For next time, consider:

1. Change the facts – what if the valet, while constructing the sandwich, noticed that it tended to fall apart. Wanting to please the Lord, he inserted a toothpick into the bread and meat to hold it together. What result?

Answer – If the patent attorney describes the sandwich with the toothpick in the patent application and writes a claim to both, the valet as well as the Lord are co-inventors at least of the claim that names both toothpick and sandwich.

2. Change the facts again – what if the valet, wanting to improve on the boring taste of the sandwich mixed up some pickles and vinegar and added this “pickled relish” to the sandwich. But, it turns out the relish improved the flavor of just about everything Lord had in his kitchen, so it was useful even without the sandwich.

What result?

Answer – Here the valet has made a second invention, since pickled relish could be useful on its own without the sandwich. If independently patentable, the patent attorney could prepare a second patent application directed to pickled relish and name only the valet as inventor. (Lord Sandwich had no creative input to the pickled relish concept, even though he may have played a pivotal role in product test).

Client News: Clean Tech Company Climeon Endorsed by Sir Richard Branson

HBW clean tech client Climeon was recently featured in a YouTube video that discusses how Climeon and Sir Richard Branson aim to change the way electricity is produced on cruise ships.

Climeon makes 100% clean electricity from waste heat, and recently announced its partnership with Richard Branson’s new cruise line, Virgin Voyages. Virgin Voyages will have six Climeon Ocean machines on each vessel (3 ships in total). The resulting environmental impact will be an estimated 5,400 tons of carbon dioxide savings annually per ship – an amount that would take 180,000 trees 30 years to absorb.

Climeon Founder & CEO Thomas Ostrom states: “I love working towards goals others believe are impossible. I know that this is only achievable by working together with extraordinary talents that share my vision of a better future for our planet. We at Climeon are extremely proud of enabling green business.”

HBW Managing Partner Ernie Beffel has represented Swedish company, Climeon, since its inception. He notes, “… it is exciting to represent cutting-edge alternative energy companies and their owners and inventors.” He continued, “… we at HBW appreciate the support of inventors who strike out on their own and change the way we think about and use energy on a global scale.”

When is an Invention Ready for Patenting?

Can I just file patent applications based on my ideas… like Company X’s water-cooled power generators that sit in the ocean? You know, the ideas that our company will likely never build. But can I still get patented anyway?

U.S. patent laws consider an invention ready for patenting only when the invention includes both: 1) an idea, and 2) a reduction to practice.

An idea becomes an invention when reduced to practice. This means that someone has either built a working model or described how to build a working unit in sufficient enough detail to enable another person – who is reasonably skilled in the art, such as a fellow programmer not otherwise familiar with the invention but who is knowledgeable about the programming environment, language(s) and the like – to build a working unit.

The second method is termed a constructive reduction to practice. In many companies, inventions are typically reduced to practice when the inventor drafts detailed functional and technical specifications, or the inventor creates a working demo or prototype.

Applying this rule to your question, the issue becomes whether the invention is merely an idea (such as generators at the bottom of the ocean) or has been reduced to practice – meaning that there working models, demos, specification documents or presentation materials describing it. If these things exist, then the invention is ready to file as a patent application even if your company has not implemented the invention yet, may not implement the invention in the next year, or may never implement the invention at all.

Of course, since patents represent a significant investment of time and money, there is also the issue of whether protecting your invention, even when reduced to practice, makes financial sense. But that’s a topic for another day.

Technological Innovation: What should my company consider valuable enough to patent?

How do I know whether my work should be protected by patenting? How does my company use a patent on my work?

Think of product development as a race between you and your competitors. In this context, how will you win the prize? In other words, if there are equally able-bodied competitors in the race, who will win the customer?

A number of ways exists that help support a win, such as strong branding and better financing, among others. However, in the technology competition context, you should strive to add functionality that none of your competitors has and cannot develop anytime soon.

Your success depends upon your ability to identify the technical problems facing consumers of your technology, address these problems with creative or cutting-edge solutions, and then vigorously protect these innovations. It is critical that you seek patents directed to protecting these innovations vis-à-vis competitors and other non-competitor patent aggressors.

To execute on this, factor the identify-innovate-protect paradigm into your product development process. Develop a milestone such as “Pre-announce Patent Review” and set it at a point in time that gives you and your patent counsel sufficient time to collect information about your innovations, and then prepare your patent applications prior to disclosing your product to the public. In short, look for “technical solutions to technical problems” and patent these.