The Doctrine of Inventorship: Its Ramifications in Patent Law

Case Western Reserve Law Review Volume 17 | Issue 5 1966 The Doctrine of Inventorship: Its Ramifications in Patent Law Edward G. Greive Follow this and additional works at: https://scholarlycommons.law.case.edu/caselrev Part of the Law Commons Recommended Citation Edward G. Greive, The Doctrine of Inventorship: Its Ramifications in Patent Law, 17 W. Res. L. Rev. 1342 (1966) Available at: https://scholarlycommons.law.case.edu/caselrev/vol17/iss5/9 This Note is brought to you for free and open access by the Student Journals at Case Western Reserve University School of Law Scholarly Commons. It has been accepted for inclusion in Case Western Reserve Law Review by an authorized administrator of Case Western Reserve University School of Law Scholarly Commons. [Vol. 17: 1342 1342 The Doctrine of Inventorship: Its Ramifications in Patent Law T HE ORIGINAL AUTHORITY for patent law and inventorship in the United States is found in article I of the Constitution which states that: "The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."' Under this basic authority, Congress has enacted a number of statutes on patent law, the most recent of which is the Patent Act of 1952.2 Like its predecessors,3 this act requires that an application for a patent "shall be made by the inventor."4 The doctrine of inventorship has evolved from this and other related provisions of the act. The traditional inventors were usually individuals like Thomas Edison, who alone had 1039 patents issued to him.5 Today, the modern corporation with its vast research facilities has caused substantive changes in inventorship entities. It is estimated that more than half of the living inventors are employed as researchers in the corporation.6 Furthermore, because of the "research team" approach employed by corporations, an increasing number of new inventions are developed not through the work of individuals, but rather through team efforts.' A vivid example of this type of joint inventorship is a recent patent on a computer which issued to a research team of twenty-one inventors.' It is not difficult to imagine the present and potential problems with respect to the doctrine of inventorship. The requirement that the true inventor must apply for the patent has at times destroyed an 1U. S. CONST. art. I, § 8. U.S.C. §§ 1-293 (1964). See, e.g., 38 Star. 958 (1915); 46 Stat. 376 (1930). 4 35 U.S.C. § 111 (1964). See Patent Office Rules of Practice, 37 C.F.R. § 1A1 (Supp. 1966) [hereinafter cited as Rules]. 5 Calvert, Iventors' Psychology, in THE ENCYCLOPEDIA OF PATENT PRACTICE AND INVENTION MANAGEMENT 492 (Calvert ed. 1964). 6 Sanders, How Many Patentees, 47 J. PAT. OFF. SOc'Y 501, 504 (1965). 7 Siegel, On Individual and Joint Patent Production, 6 PATENT, TRADEMARK, & COPYRIGHT J. RESEARCH & EDUcATION 241 (1962) [hereinafter cited by its new name: IDEAl. 8 See United States Letters Patent 3,112,394 assigned to the National Cash Register Company, Dayton, Ohio. 235 3 DOCTRINE OF INVENTORSHIP 1966] otherwise valid patent.' The problem is especially acute in the corporate field where the true inventor or inventors are not always easily determined when the invention develops out of a team effort. Difficult questions arise as to whether the inventor is the supervisor, a research member, or the whole research team. Therefore, the purpose of this Note is to examine the scope of the current inventorship laws and to discuss their effect and ramifications on other areas of the law. I. MEANING OF INVENTORSHIP In attempting to arrive at an adequate meaning of inventorship, it is first mandatory to define an "invention." Many complete texts, articles, and judicial opinions have struggled with this problem."0 One of the more recent and more practical articles on this topic was written by Judge Rich of the United States Court of Customs and Patent Appeals," who interpreted sections 101 through 103 of the Patent Act,'" and concluded that an invention must be new, useful, 9 See text accompanying notes 86-97 infra. 10 See, e.g., TOULMIN, INVENTION AND THE LAW (1936); Ballard, What isInvention, 39 J. PAT. OFF. Soc'y 319 (1957); Buckles, Rules for Determining What Is Invention, 26 FORDHAM L REV. 302 (1957). For a comprehensive listing of cases which have dealt with the question of invention see 2 WALKER, PATENTS §§ 126-27 (2d ed. Deller 1964). 11 Rich, The Vague Concept of "Invention" as Replaced by Sec. 103 of the 1952 Patent Act, 46 J. PAT. OFF. SoC'Y 855 (1964). 12 35 U.S.C. § 101 (1964) is entitled "Inventions patentable" and reads: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 102 (1964) is entitled "Conditions for patentability; novelty, and loss of right to patent" and reads as follows: A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention; or (d) the invention was first patented or caused to be patented by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application filed more than twelve months before the filing of the application in the United States, or (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or (f) he did not himself invent the subject matter sought to be patented, or (g) before the applicant's invention thereof the invention was made in 1344 WESTERN RESERVE LAW REVIEW [VoL 17: 1342 and unobvious.'3 But even if these requirements are met, a patentable invention might not exist because of a statutory bar. 4 Section 102 contains various bars to patentability which, together with section 103, distinguish the patentable from the unpatentable invention. As Judge Rich so aptly stated: All an invention is, however, is something which has been found out, or devised, or discovered. The question today is not what to call it but whether, under the statute, it is patentable. Hundreds of "real" or "true" inventions, all resulting from "inventive acts" and the exercise of the "inventive faculties" are held unpatentable every day for lack of novelty. 15 The second element of inventorship (...truncated)