【程序】restriction requirement限制要求
在審查員提出restriction requirement而分割成二個以上的專利案時，於之後所加入或修改的claim尚必需符合consonance requirement，才可避免the charge of double patenting。至於什麼是“consonance requirement” 請參照如下黑體字。
The claims of the different applications or patents are not consonant with the restriction requirement made by the examiner, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the divisional application filed includes additional claims not consonant in scope to the original claims subject to restriction in the parent. Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991) and Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
資料來源：MPEP 804.01
其他有關restriction requirement的判例，可用google搜尋。
10/27/2006
10/26/2006
【程序】reissue 再發行
更新2006.11.01
【程序】reissue 再發行
判例
GUIDANT CORPORATION, GUIDANT SALES CORPORATION
and ELI LILLY & COMPANY, V. MIROWSKI FAMILY VENTURES L.L.C.
依據35 U.S.C. § 251，在符合‘error’ requirement的情況下，發明人可以利用再發行來擴大請求項，專利代理人的錯誤被認為是常見的錯誤，但“recapture” 原申請案所曾放棄的範圍不被認為是錯誤，不符合錯誤要件。
Pursuant to 35 U.S.C. § 251, a patentee may obtain reissue of a patent if the patent is, through error “without any deceptive intention, deemed wholly or partly inoperative or invalid, . . . by reason of the patentee claiming more or less than he had a right to claim in the patent . . . .” 35 U.S.C. § 251; see also 37 C.F.R. § 1.175.
“In considering the ‘error’ requirement, we keep in mind that the reissue statute is ‘based on fundamental principles of equity and fairness, and should be construed liberally.’” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir. 1998) (citation omitted). We have stated that “[a]n attorney’s failure to appreciate the full scope of the invention is one of the most common sources of defects in patents,” and is generally sufficient to justify reissuing a patent. In re Wilder, 736 F.2d 1516, 1519 (Fed. Cir. 1984); see also Hester, 142 F.3d at 1479-80; In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997); Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993); Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1575 (Fed. Cir. 1991). It is not necessary that the error be unavoidable or that the error could not have been discovered by the patentee through proper communication with the prosecuting attorney. Wilder, 736 F.2d at 1519.
Reissue proceedings, however, cannot be used to obtain subject matter that could not have been included in the original patent. Under the “recapture” rule, the deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent “made in an effort to overcome a prior art rejection” is not such “error” as will allow the patentee to recapture that subject matter in a reissue. Clement, 131 F.3d at 1468-69. Thus, the recapture rule prevents a patentee from regaining, through reissue, subject matter that was surrendered during prosecution of the original patent in an effort to obtain allowance of the original claims. Pannu v. Storz Inst., Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001); see also Hester, 142 F.3d at 1479-80 (“[A] surrender is not the type of correctable ‘error’ contemplated by the reissue statute.”).
recapture rule的三個判斷步驟
“We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (citing Clement, 131 F.3d at 1471); see also Pannu, 258 F.3d at 1371 (citing Hester, 142 F.3d at 1482-83; Clement, 131 F.3d at 1470).
所以，判斷有無surrender，是能不能夠透過ressure來recapture原本之專利範圍的要件之一。於此案例中：
It is clear from the prosecution history that neither the examiner nor the prosecuting attorney, Mr. Nikolai, considered the unconditional embodiment a part of the invention. The fact that Mr. Nikolai thought the claims were directed to the conditional embodiment alone is demonstrated by his correspondence with the inventor and with the examiner. The fact that the examiner thought that the claim was to the conditional embodiment alone is demonstrated by the examiner’s amendment he made to add “minor wording changes.” This is the kind of inadvertence or mistake that the reissue doctrine was meant to remedy.
因為審查員及專利代理人都沒有考慮到nonconditional embodiment，所以雖然不符合surrender要件，因此可以讓專利權人recapture原本之專利範圍nonconditional embodiment的部分。
不知在臺灣因專利代理人的錯誤，是不是有什麼方法擴大專利範圍？
資料來源：一：Patent Prospector
【程序】reissue 再發行
判例
GUIDANT CORPORATION, GUIDANT SALES CORPORATION
and ELI LILLY & COMPANY, V. MIROWSKI FAMILY VENTURES L.L.C.
依據35 U.S.C. § 251，在符合‘error’ requirement的情況下，發明人可以利用再發行來擴大請求項，專利代理人的錯誤被認為是常見的錯誤，但“recapture” 原申請案所曾放棄的範圍不被認為是錯誤，不符合錯誤要件。
Pursuant to 35 U.S.C. § 251, a patentee may obtain reissue of a patent if the patent is, through error “without any deceptive intention, deemed wholly or partly inoperative or invalid, . . . by reason of the patentee claiming more or less than he had a right to claim in the patent . . . .” 35 U.S.C. § 251; see also 37 C.F.R. § 1.175.
“In considering the ‘error’ requirement, we keep in mind that the reissue statute is ‘based on fundamental principles of equity and fairness, and should be construed liberally.’” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir. 1998) (citation omitted). We have stated that “[a]n attorney’s failure to appreciate the full scope of the invention is one of the most common sources of defects in patents,” and is generally sufficient to justify reissuing a patent. In re Wilder, 736 F.2d 1516, 1519 (Fed. Cir. 1984); see also Hester, 142 F.3d at 1479-80; In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997); Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993); Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1575 (Fed. Cir. 1991). It is not necessary that the error be unavoidable or that the error could not have been discovered by the patentee through proper communication with the prosecuting attorney. Wilder, 736 F.2d at 1519.
Reissue proceedings, however, cannot be used to obtain subject matter that could not have been included in the original patent. Under the “recapture” rule, the deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent “made in an effort to overcome a prior art rejection” is not such “error” as will allow the patentee to recapture that subject matter in a reissue. Clement, 131 F.3d at 1468-69. Thus, the recapture rule prevents a patentee from regaining, through reissue, subject matter that was surrendered during prosecution of the original patent in an effort to obtain allowance of the original claims. Pannu v. Storz Inst., Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001); see also Hester, 142 F.3d at 1479-80 (“[A] surrender is not the type of correctable ‘error’ contemplated by the reissue statute.”).
recapture rule的三個判斷步驟
“We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (citing Clement, 131 F.3d at 1471); see also Pannu, 258 F.3d at 1371 (citing Hester, 142 F.3d at 1482-83; Clement, 131 F.3d at 1470).
所以，判斷有無surrender，是能不能夠透過ressure來recapture原本之專利範圍的要件之一。於此案例中：
It is clear from the prosecution history that neither the examiner nor the prosecuting attorney, Mr. Nikolai, considered the unconditional embodiment a part of the invention. The fact that Mr. Nikolai thought the claims were directed to the conditional embodiment alone is demonstrated by his correspondence with the inventor and with the examiner. The fact that the examiner thought that the claim was to the conditional embodiment alone is demonstrated by the examiner’s amendment he made to add “minor wording changes.” This is the kind of inadvertence or mistake that the reissue doctrine was meant to remedy.
因為審查員及專利代理人都沒有考慮到nonconditional embodiment，所以雖然不符合surrender要件，因此可以讓專利權人recapture原本之專利範圍nonconditional embodiment的部分。
不知在臺灣因專利代理人的錯誤，是不是有什麼方法擴大專利範圍？
資料來源：一：Patent Prospector
10/24/2006
【申請】Reduction to Practice 具體化
【申請】Reduction to Practice 具體化
僅是有個idea尚未做實驗是否能夠申請專利？
要申請專利必需是完成conception及reduction to practice，但是所謂的reduction to practice不一定要真正完成實驗或做出成品，只要是提出申請案即可完成“推定具體化”。但應注意的是，推定的具體化尚需符合第112條第1段落。
2138.05 MANUAL OF PATENT EXAMINING PROCEDURE
Reduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed.Cir. 1998).
Reduction to Practice分成“實際的具體化”及“推定的具體化”。
The earlier application must meet the enablement requirement and must contain a written description of the subject matter of the interference count. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998). Proof of a constructive reduction to practice requires sufficient disclosure under the “how to use” and “how to make” requirements of 35 U.S.C. 112, first paragraph. Kawaiv. Metlesics, 480 F.2d 880, 886, 178 USPQ 158, 163 (CCPA 1973) (A constructive reduction to practice is not proven unless the specification discloses a practical utility where one would not be obvious. )
僅是有個idea尚未做實驗是否能夠申請專利？
要申請專利必需是完成conception及reduction to practice，但是所謂的reduction to practice不一定要真正完成實驗或做出成品，只要是提出申請案即可完成“推定具體化”。但應注意的是，推定的具體化尚需符合第112條第1段落。
2138.05 MANUAL OF PATENT EXAMINING PROCEDURE
Reduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed.Cir. 1998).
Reduction to Practice分成“實際的具體化”及“推定的具體化”。
The earlier application must meet the enablement requirement and must contain a written description of the subject matter of the interference count. Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998). Proof of a constructive reduction to practice requires sufficient disclosure under the “how to use” and “how to make” requirements of 35 U.S.C. 112, first paragraph. Kawaiv. Metlesics, 480 F.2d 880, 886, 178 USPQ 158, 163 (CCPA 1973) (A constructive reduction to practice is not proven unless the specification discloses a practical utility where one would not be obvious. )
10/21/2006
【實施】不公正行為
【實施】不公正行為
只要是不公正行為，則整份專利中的所有請求項不能執行，不論是否僅有單一請求項符合不公正行為。不公正行為，在審查期間若事後提出正確的數據資料是可以被治癒的，但是Reissue時就不能被治癒。
See：Hewlet-Packard Co. v. Crystal Chem Co.、In re Clark CCPA 1975
Inequitable conduct的兩個重要元素：materiality and intent
“Inequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995).
The district court correctly concluded that the terminal disclaimer alone did not bind the ’368 patent and the ’504 patent together for purposes of unenforceability due to inequitable conduct. Because the record shows no inequitable conduct during prosecution of the ’504 patent itself, the district court did not abuse its discretion in finding the ’504 patent to be valid and enforceable. In fact, the ’504 patent had already issued before the inequitable conduct occurred. The ’504 patent issued on March 22, 1994; Stjernschantz executed his declaration on April 20, 1994.
後案且提出Terminal Disclaimer的專利案涉及不公正行為時，前案不會被判決不能執行。
只要是不公正行為，則整份專利中的所有請求項不能執行，不論是否僅有單一請求項符合不公正行為。不公正行為，在審查期間若事後提出正確的數據資料是可以被治癒的，但是Reissue時就不能被治癒。
See：Hewlet-Packard Co. v. Crystal Chem Co.、In re Clark CCPA 1975
Inequitable conduct的兩個重要元素：materiality and intent
“Inequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995).
The district court correctly concluded that the terminal disclaimer alone did not bind the ’368 patent and the ’504 patent together for purposes of unenforceability due to inequitable conduct. Because the record shows no inequitable conduct during prosecution of the ’504 patent itself, the district court did not abuse its discretion in finding the ’504 patent to be valid and enforceable. In fact, the ’504 patent had already issued before the inequitable conduct occurred. The ’504 patent issued on March 22, 1994; Stjernschantz executed his declaration on April 20, 1994.
後案且提出Terminal Disclaimer的專利案涉及不公正行為時，前案不會被判決不能執行。
10/20/2006
【申請】揭示責任
【申請】揭示責任
揭示責任（Duty to disclose information material to patentability）
要判斷參考文獻是否必須提交給審查委員，其標準在於「material to patentability」，而“material”的標準於1992年以前為“Reasonable Examiner Standard”；因被批評不明確且和專利法其他領域所使用的概念沒有任何關係，所以USPTO於1992年將其改成“prima facie case of unpatentability”，只是這種標準是否會被法院採用尚不確定。
==
資料來源
The Federal Circuit stated that “inequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” The withholding of information must meet thresholds of both materiality and intent. The standard a court should apply in determining whether a reference is “material” is not whether the particular examiner of the application at issue considered the reference to be important, rather, it is that of a “reasonable examiner.” Nor is a reference immaterial simply because the claims are eventually deemed by an examiner to be patentable thereover.
==
37 CFR 1.56
Duty to disclose information material to patentability.
(b)
Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1)
It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2)
It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
其他文章：（Lessons From Recent Findings of Inequitable Conduct）
揭示責任（Duty to disclose information material to patentability）
要判斷參考文獻是否必須提交給審查委員，其標準在於「material to patentability」，而“material”的標準於1992年以前為“Reasonable Examiner Standard”；因被批評不明確且和專利法其他領域所使用的概念沒有任何關係，所以USPTO於1992年將其改成“prima facie case of unpatentability”，只是這種標準是否會被法院採用尚不確定。
==
資料來源
The Federal Circuit stated that “inequitable conduct includes affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” The withholding of information must meet thresholds of both materiality and intent. The standard a court should apply in determining whether a reference is “material” is not whether the particular examiner of the application at issue considered the reference to be important, rather, it is that of a “reasonable examiner.” Nor is a reference immaterial simply because the claims are eventually deemed by an examiner to be patentable thereover.
==
37 CFR 1.56
Duty to disclose information material to patentability.
(b)
Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application, and
(1)
It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2)
It refutes, or is inconsistent with, a position the applicant takes in:
(i) Opposing an argument of unpatentability relied on by the Office, or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.
其他文章：（Lessons From Recent Findings of Inequitable Conduct）
【美專】申請專利文件
【美專】申請專利文件
依據35 U.S.C. 111 Application.
申請美國專利需要：說明書、圖式、宣誓書、申請規費。其中，為提早取得申請日，宣誓書、申請規費可以於提交說明書及圖式後的一段期間內提交。
於1994年以後，新增provisional申請案，其不需繳交宣誓書；於1997年以後，僅需繳交說明書、圖式，即可取得申請日。
===
35 U.S.C. 111 Application
(a) IN GENERAL.-
(1) WRITTEN APPLICATION.-An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.-Such application shall include-
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.-The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
==
§ 1.53 Application number, filing date, and completion of application.
(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).
(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
依據35 U.S.C. 111 Application.
申請美國專利需要：說明書、圖式、宣誓書、申請規費。其中，為提早取得申請日，宣誓書、申請規費可以於提交說明書及圖式後的一段期間內提交。
於1994年以後，新增provisional申請案，其不需繳交宣誓書；於1997年以後，僅需繳交說明書、圖式，即可取得申請日。
===
35 U.S.C. 111 Application
(a) IN GENERAL.-
(1) WRITTEN APPLICATION.-An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.-Such application shall include-
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.-The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.-Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
==
§ 1.53 Application number, filing date, and completion of application.
(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).
(c) Application filing requirements - Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.
10/19/2006
專利權的共同所有於台美間的差異
台美專利權的共同所有的差異
臺灣專利法與美國專利法的不同，臺灣專利法規定「非得共有人全體之同意，不得讓與或授權他人實施」，但美國判例則判決（沒找到法條但找到判例）「可以將其權利轉換給他人」。
兩者各自立法想保護的對象重點不同，這樣的差異可以依契約來規定來解決各立法的缺點，在臺灣專利法下可以於契約中規定“不實施補償”來保護“弱勢的發明人”。
===
臺灣專利法
○第 61 條 發明專利權為共有時，除共有人自己實施外，非得共有人全體之同意，不得讓與或授權他人實施。但契約另有約定者，從其約定。
○第 62 條 發明專利權共有人未得共有人全體同意，不得以其應有部分讓與、信託他人或設定質權。
美國專利法
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
To determine ownership of the ‘446, ‘438, and ‘114 Patents, the Court first must determine the inventorship of the inventions in the patents. Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993). Normally, ownership of the patents will be determined by the identity of the inventors. Id. (“At the heart of any ownership analysis lies the question of who first invented the subject matter at issue, because the patent right initially vests in the inventor who may then, barring any restrictions to the contrary, transfer that right to another, and so forth.”); Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403, 407 (Fed. Cir. 1996) (“Ownership springs from invention.”)（資料來源）
參考資料：（一）不實施補償
臺灣專利法與美國專利法的不同，臺灣專利法規定「非得共有人全體之同意，不得讓與或授權他人實施」，但美國判例則判決（沒找到法條但找到判例）「可以將其權利轉換給他人」。
兩者各自立法想保護的對象重點不同，這樣的差異可以依契約來規定來解決各立法的缺點，在臺灣專利法下可以於契約中規定“不實施補償”來保護“弱勢的發明人”。
===
臺灣專利法
○第 61 條 發明專利權為共有時，除共有人自己實施外，非得共有人全體之同意，不得讓與或授權他人實施。但契約另有約定者，從其約定。
○第 62 條 發明專利權共有人未得共有人全體同意，不得以其應有部分讓與、信託他人或設定質權。
美國專利法
35 U.S.C. 262 Joint owners.
In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
To determine ownership of the ‘446, ‘438, and ‘114 Patents, the Court first must determine the inventorship of the inventions in the patents. Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248 (Fed. Cir. 1993). Normally, ownership of the patents will be determined by the identity of the inventors. Id. (“At the heart of any ownership analysis lies the question of who first invented the subject matter at issue, because the patent right initially vests in the inventor who may then, barring any restrictions to the contrary, transfer that right to another, and so forth.”); Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403, 407 (Fed. Cir. 1996) (“Ownership springs from invention.”)（資料來源）
參考資料：（一）不實施補償
【發明人】申請人及發明人主體（二）
申請人及發明人主體（二）
Because "[c]onception is the touchstone of inventorship," each joint inventor must generally contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). Additionally, courts require corroborating evidence of conception. Id. at 1228. However, contribution to one claim is sufficient to be a co-inventor. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). Conception is defined as "the `formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'" Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (citation omitted). Conception is complete when "the idea is so clearly defined in the inventor's mind that only ordinary kill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome, 40 F.3d at 1228.（資料來源）
可參照此篇（或備份）文章，更清楚了解誰才是發明人。
能夠提供Conception的人才是發明人，所以僅是（1）提出應被解決的問題、希望得到的結果、籠統的解決方法；或（2）將發明具體化（具以實施（reduction to practice））的皆非發明人。
關於共同發明人
A joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final result. Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work on the project together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each of the inventors plays a different role and that the contribution of one may not be as great as that of another, does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.
因此有collaboration才算是共同發明人，各自努力而達到相同的結果，不能稱為共同發明人，所謂的collaboration不必然是發生在相同的時間，且其可能情況如：「seeing a relevant report and building upon it」或「hearing another's suggestion at a meeting」。
MPEP（2137.01 Inventorship [R-3] - 2100 Patentability）中提供更多的解譯：
The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. "Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent." 35 U.S.C. 116. "[T]he statute neither states nor implies that two inventors can be 'joint inventors' if they have had no contact whatsoever and are completely unaware of each other"s work." What is required is some "quantum of collaboration or connection." In other words, " [f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting." Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960) ("it is not necessary that the inventive concept come to both [joint inventors] at the same time").
關於「the doctrine of simultaneous conception and reduction to practice」（參見Fina Oil V. Ewen 資料來源）
That doctrine states that in some instances, an inventor may only be able to establish a conception by pointing to a reduction to practice through a successful experiment. See Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).The doctrine of simultaneous conception and reduction to practice applies to the conception of the entire invention. Thus, it is applied in priority disputes to determine priority of conception as between one patent or application and another application.
Conception and reduction to practice of the entire claimed invention may be relevant to establish that a first person conceived of an invention before another person entered the scene, and that the first person is therefore the sole inventor. However, the doctrine cannot be used, as the district court did here, to show that because the first person did not conceive or reduce to practice the entire claimed invention, he or she did not at least contribute in some significant way to the ultimate conception.
“the doctrine of simultaneous conception and reduction to practice”係用來決定誰是第一發明人，但欲無法被適用於決定誰是發明人（he or she did not at least contribute in some significant way to the ultimate conception）。
Because "[c]onception is the touchstone of inventorship," each joint inventor must generally contribute to the conception of the invention. Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994). Additionally, courts require corroborating evidence of conception. Id. at 1228. However, contribution to one claim is sufficient to be a co-inventor. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998). Conception is defined as "the `formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'" Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (citation omitted). Conception is complete when "the idea is so clearly defined in the inventor's mind that only ordinary kill would be necessary to reduce the invention to practice, without extensive research or experimentation." Burroughs Wellcome, 40 F.3d at 1228.（資料來源）
可參照此篇（或備份）文章，更清楚了解誰才是發明人。
能夠提供Conception的人才是發明人，所以僅是（1）提出應被解決的問題、希望得到的結果、籠統的解決方法；或（2）將發明具體化（具以實施（reduction to practice））的皆非發明人。
關於共同發明人
A joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final result. Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work on the project together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each of the inventors plays a different role and that the contribution of one may not be as great as that of another, does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.
因此有collaboration才算是共同發明人，各自努力而達到相同的結果，不能稱為共同發明人，所謂的collaboration不必然是發生在相同的時間，且其可能情況如：「seeing a relevant report and building upon it」或「hearing another's suggestion at a meeting」。
MPEP（2137.01 Inventorship [R-3] - 2100 Patentability）中提供更多的解譯：
The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. "Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent." 35 U.S.C. 116. "[T]he statute neither states nor implies that two inventors can be 'joint inventors' if they have had no contact whatsoever and are completely unaware of each other"s work." What is required is some "quantum of collaboration or connection." In other words, " [f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting." Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960) ("it is not necessary that the inventive concept come to both [joint inventors] at the same time").
關於「the doctrine of simultaneous conception and reduction to practice」（參見Fina Oil V. Ewen 資料來源）
That doctrine states that in some instances, an inventor may only be able to establish a conception by pointing to a reduction to practice through a successful experiment. See Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).The doctrine of simultaneous conception and reduction to practice applies to the conception of the entire invention. Thus, it is applied in priority disputes to determine priority of conception as between one patent or application and another application.
Conception and reduction to practice of the entire claimed invention may be relevant to establish that a first person conceived of an invention before another person entered the scene, and that the first person is therefore the sole inventor. However, the doctrine cannot be used, as the district court did here, to show that because the first person did not conceive or reduce to practice the entire claimed invention, he or she did not at least contribute in some significant way to the ultimate conception.
“the doctrine of simultaneous conception and reduction to practice”係用來決定誰是第一發明人，但欲無法被適用於決定誰是發明人（he or she did not at least contribute in some significant way to the ultimate conception）。
申請人及發明人主體（一）
申請人及發明人主體（inventorship entity）（一）
35 U.S.C. 111：An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title.
相異於臺灣專利法，美國專利法35 U.S.C. 111規定：專利的申請案，必須由發明人或由發明人授權申請。
不過，該條還有其他的但書，如
35 U.S.C. 117：Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
發明人去逝或無法律上的行為能力，則可由合法代表人進行專利申請。
35 U.S.C. 118：Whenever an inventor （1）refuses to execute an application for patent, or （2）cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.
當（1）發明人拒絕、或是（2）經勤勉努力尚無法找到發明人時，則具足夠之所有權利益的人（包括受讓人、發明人已同意受讓的人、專利權所有人）可以進行專利申請。
Judge Rich noted that this "completely ignores the requirement that patents are applied for 'in the name of the actual inventor or inventors' according to 37 C.F.R. Section 1.41(a) (1983)." "The inventor(s) must submit an oath or declaration attesting that they have 'reviewed and understand[ ] the contents of the specification' and believe 'the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.' 37 C.F.R. Section 1.63(b)(1), (2) (1992); see also 37 C.F.R. Section 1.51(a)(2) (1992)（資料來源）
發明人必須提交oath or declaration證實他們已復審及了解說明書內容，必且相信他們為原始發明人、且為第一個發明該發明的人。
另外，為提早取得申請日，oath or declaration可以於申請後再提交，不必與說明書同時提交。
35 U.S.C. 111：An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title.
相異於臺灣專利法，美國專利法35 U.S.C. 111規定：專利的申請案，必須由發明人或由發明人授權申請。
不過，該條還有其他的但書，如
35 U.S.C. 117：Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.
發明人去逝或無法律上的行為能力，則可由合法代表人進行專利申請。
35 U.S.C. 118：Whenever an inventor （1）refuses to execute an application for patent, or （2）cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.
當（1）發明人拒絕、或是（2）經勤勉努力尚無法找到發明人時，則具足夠之所有權利益的人（包括受讓人、發明人已同意受讓的人、專利權所有人）可以進行專利申請。
Judge Rich noted that this "completely ignores the requirement that patents are applied for 'in the name of the actual inventor or inventors' according to 37 C.F.R. Section 1.41(a) (1983)." "The inventor(s) must submit an oath or declaration attesting that they have 'reviewed and understand[ ] the contents of the specification' and believe 'the named inventor or inventors to be the original and first inventor or inventors of the subject matter which is claimed and for which a patent is sought.' 37 C.F.R. Section 1.63(b)(1), (2) (1992); see also 37 C.F.R. Section 1.51(a)(2) (1992)（資料來源）
發明人必須提交oath or declaration證實他們已復審及了解說明書內容，必且相信他們為原始發明人、且為第一個發明該發明的人。
另外，為提早取得申請日，oath or declaration可以於申請後再提交，不必與說明書同時提交。
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