Christopher J. Cuneo, The Daily Record Newswire
Ask any fifth grader, “Who invented the light bulb?” and they will typically respond, “Thomas Edison.”
They may not know, however, that Edison worked for the company that eventually became General Electric. New patent laws allowing companies to file patent applications on employee inventions may help future fifth graders more readily identify today’s “General Electrics” over the “Edisons.”
The changes take effect Sept. 16 and stem from the sweeping reforms of last year’s passage of the America Invents Act, which, among other things, changes the United States from a “first person to invent” patent system to a “first entity to file an application” system.
In keeping with a first-to-file system, the laws will now permit an entity to file for a patent whether or not that entity is the inventor. Thus, companies can file in the company’s name on inventions developed by employees. Furthermore, the patent filing can be completed by, and granted to, the company even in circumstances where the inventor is unable or unwilling to participate.
A patent application may now be filed by a company when the inventor has already executed an assignment of the patent rights. Typically, this is accomplished by a signed, written document that identifies the particular invention and grants the rights thereto to the assignee company.
Additionally, companies may file when the invention is not specifically assigned, but where the inventor owes a duty to assign the patent rights — in other words, through an employee agreement that generally obligates the employee to assign all employment-related inventions to the company.
Finally, an application can be filed by a company that has neither an assignment nor a general obligation to assign, but that can show a “sufficient proprietary interest in the matter.” For example, the law potentially covers a scenario where a company paid the employee to develop the patentable subject matter, but unfortunately did not bind the employee with any contractual obligation to assign the patent rights.
The inventor, however, is not completely forgotten.
The laws still require a patent application to identify the inventor(s) of the subject matter and to have the inventor(s) sign, under penalty of fine or imprisonment, a statement that the inventor believes himself or herself to be the original inventor of the subject matter.
However, the new laws now give companies additional flexibility to correct any improper identification of the original inventor(s), or even to proceed with the filing and obtain a patent for the company if the employee/inventor is unable to participate in the filing (e.g., the inventor is incapacitated or deceased), unable to be located after a diligent search (e.g., the inventor has moved and cannot be found), or unwilling to participate (e.g., the inventor is an uncooperative ex-employee).
In view of these new laws, Idaho businesses will be well served to revisit employee agreements, and revise patent filing procedures to accommodate the new rules.
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Christopher J. Cuneo is a former patent examiner at the U.S. Patent & Trademark office who now practices law in Boise at Parsons Behle & Latimer.
