Severability Of Joint Inventor’s Disclosed Work Under AIA

January 12, 2016

By: N. Scott Pierce

Law360

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Law360Over two years have passed since filing of patent applications subject to the first-inventor-to-file-or-disclose restriction of the America Invents Act [1] began, and patents granted under the new regime are starting to find their way into the judicial system. As with any new legislation, it is likely that many features of the AIA will be subject to interpretation by the courts.

One particular issue may be the scope of exceptions to “prior art” for disclosures made by “inventors or joint inventors.”[2] Statutory “conditions for patentability” under the AIA now include exceptions to the requirement of novelty for disclosures “made 1 year or less before the effective filing date of a claimed invention” where the disclosure was made by the “inventor or joint inventor” or where “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor.”[3] However, neither the AIA nor its legislative history clarifies whether disclosed subject matter must be the work of the inventive entity of the claimed invention or need only be the work of a member or subgroup of that inventive entity. In other words, is the disclosed work of a joint inventor “severable,” i.e. legally distinct from that of a joint inventorship entity of which he or she is a part?

 

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Overview

January 12, 2016

By: N. Scott Pierce

Law360

View Link

Law360Over two years have passed since filing of patent applications subject to the first-inventor-to-file-or-disclose restriction of the America Invents Act [1] began, and patents granted under the new regime are starting to find their way into the judicial system. As with any new legislation, it is likely that many features of the AIA will be subject to interpretation by the courts.

One particular issue may be the scope of exceptions to “prior art” for disclosures made by “inventors or joint inventors.”[2] Statutory “conditions for patentability” under the AIA now include exceptions to the requirement of novelty for disclosures “made 1 year or less before the effective filing date of a claimed invention” where the disclosure was made by the “inventor or joint inventor” or where “the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor.”[3] However, neither the AIA nor its legislative history clarifies whether disclosed subject matter must be the work of the inventive entity of the claimed invention or need only be the work of a member or subgroup of that inventive entity. In other words, is the disclosed work of a joint inventor “severable,” i.e. legally distinct from that of a joint inventorship entity of which he or she is a part?

 

Read the full article on Law360.

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