Inventorship and Claim Scope Decisions

By Ronald A. Krasnow.

Do you fully use an inventorship determination for the benefit of your company or client?  Do you decide on claim scope in view of inventorship?

Consider the Federal Circuit's decision in Lucent v. Gateway, Dell & Microsoft (decided Sept. 25, 2008 - Fed. Cir. 2007-1546, -1580).  While this case undoubtedly demonstrates that patent legislation should not be outcome driven, it contained an interesting proposed use of inventorship determinations.  In Lucent, the Court decided that claims 1 and 3 were solely owned by Lucent (because they were invented by Lucent's employees), but that claims 2 and 4 was jointly owned by Lucent and a joint development partner under a joint development agreement.  The Court reasoned that Lucent, who was in control of prosecution, could have split up the claims into separate patents so that it solely owned the invention claimed in claims 1 and 3. (The Court unfortunately did not deal with the reality facing an attorney trying to balance patentable subject matter with inventorship and obviousness under 35 UCS 103(c).)

The Court's reasoning, created in hindsight, raises a number of practical issues.

The first is, really, how do you make an inventorship decision in view of a joint development agreement?  For example, do you draft the patent application as broadly as the prior art will allow?  Or do you draft the claims only as broad as your company's inventors contributions?  Can you realistically split up the claims along inventorship lines and still get past Section 103 on parallel applications?

Once the inventorship decision has been made, have you made full use of that decision to the benefit of your company or client.  Most patent attorneys focus on making sure that the patent application names the correct inventors or complying with the laws of the countries where the inventors reside.  But, the Lucent decision suggests that enforcement should also be considered at the time inventorship and claim scope decisions are made.

One other consideration is drafting the joint development agreement. The Lucent decision suggests that large companies with negotiating power might require joint development partners to not license others inside the field of joint research and development program.

On the policy side, the Federal Circuit's reasoning logically leads to other considerations:

1. If you draft broader claims, should there be an equitable remedy available so that the added inventor (read as joint development partner) does not gain a windfall by access to the broader claims, when it is only the narrow and more subservient claims to which it contributed? 
2. Should reissue be afforded to allow case to be divided, to shelter the contribution of the dominant technology owner?
3. Does the party prosecuting the patent applications have any "duty" to an omitted inventor?  For example, if claims to which the omitted inventor contributed are cancelled, or are disclaimed during post-issuance proceedings, does the omitted inventor have any claim for "waste"?

Note: Mr. Krasnow's new book Intellectual Property Culture (Oxford University Press) was just released [Link]