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Let´s assume that a company has designed and developed several "building blocks", components, elements or devices that when combined and considered in a specific way (and only in that way) define a final and complete solution (device composed of several sub-elements or components) that will be patented. If:

  1. An inventor is a party who conceived (not just contributed to the reduction-to-practice) at least one claim to a patent,
  2. the threshold question" of inventorship is "who conceived the invention".
  3. Conception is "the complete performance of the mental part of the inventive act", and "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice..". An idea is usually not "definite and permanent" or "complete" where changes result from experimentation. In this case, other individuals who contribute to the formation of the "definite and permanent" idea are co-inventors.

Can the employee who described the final configuration, who selected the building blocks to be added to the "integrated device" and the bloxks to be left out of the PCT, who also selected and defined the list of claims to be included in the PCT and who prepared the documents submitted to apply for the PCT be included as co-inventor? Has he any any rights on this PCT?

For example, should other different set of sub-components be selected and listed on the PCT, or claims defined in a different way, the PCT would be declared as not "innovative" or not novel. This guy selected the right building blocks, the right claims to be included on the PCT and prepared the documentation submitted (obviously includind the building blocks created by other guys in his company).

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I an an inventor, not a lawyer, so this is my best understanding. The specific criteria is whether you identify at least one claim which wouldn't have been there without your contribution. Ideally you can prove this by referencing your lab documentation or other permanent record. You really need to do something inventive. Preparing documents or even selecting claims in the application are not sufficient. Otherwise every patent would list the patent lawyer as an inventor too.

So, describing the final configuration would not entitle you to being named an inventor unless that final configuration is specified in a claim. Even then, the configuration needs to be novel. I worked for a large company and the question of inventorship came up frequently when preparing patent applications. In general, we left it to the patent lawyers to assess inventorship. In my experience they were generally inclusive rather than exclusive. In my company and as is standard with most companies, the inventors assign all the patent ownership rights to the company so the only practical difference is who is listed as an inventor on the patent.

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The strategies for what to claim and what embodiments to detail in a patent application might fall into the domain of your patent attorney (or patent agent).

In terms of the hierarchy of sub-components of a product, inventorship might exist or not exit at all levels of the project. In some cases a critical sub-component is what enables the final product to exist and that sub-component is what is really novel and non obvious and what amounts to the protectable part.

This might be inventing or it might not be. Probably not. Was there an unexpected result due to the combination? Did others think it would not work that way? As a patent agent I do something a lot like that to try to craft a claim that will be seen as novel has an inventive step and is important to the business needs of my client. It requires cleverness and creativity but I'm not inventing. I'm strategically choosing a subset of what has been invented by others to be claimed. It definitely adds value but is not inventing.

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  • Thanks. What happens if only the right combination of sub-elements is what really is a novelty and can be patented? I mean, if no one in the company was able to select the right elements to create a device to be patented before even if they tried? For example, if the company tried to get a patent for other combination of component sub-elements and it was rejected? Has that guy the right to claim that his/her election of elements to be included in the PCT and in the claims is his decision and it was the reason to get a valid patent? May 25 at 7:27

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