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  Intellectual Property Issues for High Tech Companies
Vol 3 Issue 6 June 2003

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You Can't Tell the Players Without a Scorecard

Tip of the Month

IP Links of Interest

On-Line Patent Glossary

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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)

Not surprisingly, many TechRoadmap clients file patent applications that build on their previous efforts. Usually this is not a problem, but when the inventive team has changes in its players, the subsequent patents may have "prior art" problems with the earlier patents. To learn why keeping an inventive team together is a good idea and to see another reason to maintain invention notebooks, read "You can't Tell the Players Without a Scorecard".
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  • You Can't Tell the Players Without a Scorecard
  This month, in honor of summer and baseball teams, we discuss a problem few companies ever think about. Successful companies are not based on a single, "killer" invention and you know advanced products are built on improvements to current products.

But what happens when you've made changes in your inventive team lineup? Do your existing patents become invalidating "prior art" against your new patent apps? As you attorney will tell you, it depends (on who the players are).....check your scorecard here...

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  • Tip of the Month
 
Things to consider when submitting your lineup to the umpire:
  • Keep a good team going - While it is tempting to move your star innovator from project to project, consider the disruptive impact of these moves on any one project. A team that stays together is likely to invent together.

  • Keep track of your players' stats - Baseball lineups are driven by the players' statistics. It's just as important to maintain inventors' records (in an invention notebook). Being able to prove which inventor was responsible for which claim may just save your patent.

  • Score runs early (Proactively identify new, patentable inventions) - An approach like TechRoadmap's Invention MiningSM will let you identify potential patents embedded in your improvements and properly name the inventors so the earlier patents don't become potential prior art.
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  • IP Links of Interest
  US Patent office - Searchable database of all US Patents and, now, published patent applications.
The Patent Cafe - an on-line source of interesting insights into current IP issues.
EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  Industry's Best Glossary
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  • You Can't Tell the Players Without a Scorecard - continued
 

Building a patent portfolio takes time. Often the inventive team that came up with the initial idea moves on to other projects (or other companies!) after the first patent app is filed and anther team takes over the continuing improvement of the technology. Perhaps an R&D department is responsible initially but a manufacturing engineering adds a number of nice features later on. A recent Court of Appeals ruling (Riverwood v. Jones) highlights an issue that most companies often overlook when structuring product development teams.

The issue for rapidly moving companies is getting caught on your own prior art. The existence of prior art can prevent you from getting a patent - or worse, invalidate one or more claims in your issued patent in the middle of an infringement suit. As a company, you create your own prior art when the inventors on a later patent are different from the inventors on the "prior art" patent. As far as you are concerned, your team developed both the initial and follow on inventions, so your company deserves both patents. In the eyes of the patent law it's the inventor who gets the patent, so only, to return to the baseball analogy, only the pitcher of record gets the win or loss, not the entire pitching staff.

In the case of Riverwood v. Jones, Riverwood owned 2 patents ('789 and '361), each of which were improvements on a third, earlier, Riverwood patent (the '806). Jones was sued for infringing the later 2 patents and defended itself by claiming the patents were invalid in light of the prior art '806 patent.

Jones's case was based on 1) Riverwood's inclusion of the '806 patent as "prior art" in the Information Disclosure Statement for the 2 later patents and 2) the different list of named inventors on the '806 and the later 2 patents.

The Appeals Court wisely rejected these technical arguments, instead relying on the intent of the patent regulations to reach its decision. The heart of "prior art" is that you should not be awarded a patent unless your invention is substantively different from what another person has done. From this perspective it is all but impossible for your own work to be prior art against you: as the Court said, rejecting Jones's first argument,

"[T]here is an important distinction between the situation where the inventor improves upon his own invention and the situation where he improves upon the invention of another. In the former situation, where the inventor continues to improve upon his own work product, his foundational work product should not, without a statutory basis, be treated as prior art solely because he admits knowledge of his own work. It is common sense that an inventor, regardless of an admission, has knowledge of his own work."

Of course, this still begs the question of what happens when you change your lineup mid-game. In the court's eyes two employees of the same company are distinct inventors, each of whom is not (automatically) improving his own invention.

In the case at hand the Appeals Court pointed out that simply looking at the list of named inventors on the three patents was not an adequate test of whether an inventor was improving his own invention. Instead, the demanded that inventorship on a claim-by-claim basis be considered. This determination was left to the lower court. In order to ultimately win, Riverwood needs clear invention notebooks to support its inventorship position. Without such documentation there will be no joy in Mudville.

Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.