專利工程師提供意見，是否應視為發明人？

專利工程師提供意見，是否應視為發明人？

專利工程師所提供的概念，是與發明人溝通後衍生所產生，應視為衍生概念，因此不得列為發明人。

MPEP 2137:
"Adoption of the ideas and materials from another can become a derivation."

While derivation will bar the issuance of a patent to the deriver, a disclosure by the deriver, absent a bar under 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived. In re Costello, 717 F.2d 1346, 1349, 219 USPQ 389, 390-91 (Fed. Cir. 1983)

衍生概念是不准允衍生者取得專利權的事由，但是在沒有35 U.S.C. 102(b)之不准專利事由的情況下，衍生者的揭露內容不能阻卻發明人取得從其所衍生之主題的專利權。

DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE ALLEGED DERIVER

 “The mere fact that a claim recites the use of various components, each of which can be argumentatively assumed to be old, does not provide a proper basis for a rejection under 35 U.S.C. 102(f).” Ex parte Billottet, 192 USPQ 413, 415 (Bd. App. 1976). Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention. Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).

Derivation 要符合幾個要件：
1、他人的完整概念（complete conception by another）。
2、在證實衍生者已擁有該發明的知識的日期之前，透過任一方式，與該衍生者溝通該概念。

該衍生者（the party charged with derivation）；衍生者（the one charged with derivation）

將衍生者比喻為IFPE時：
       通常IFPE擁有該發明的知識，是與發明人溝通之後，亦即在溝通前IFPE不具有該發明 的知識。則前述第二點為：在IFPE不具有該發明的知識前，與IFPE溝通該概念。

 See also Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA 1974). “Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.” Hedgewick, 497 F.2d at 908, 182 USPQ at 169. See also Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997) (Issue in proving derivation is “whether the communication enabled one of ordinary skill in the art to make the patented invention.”).


Who should be named as an inventor on my patent application? | iPatent Attorney:
 "Who should be named as an inventor on my patent application?"

Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the extensive experimentation to make the invention operative.

Merely hoping that something will work does not establish conception, since there is not a definite understanding or a reasonable expectation that the invention will work.

But simply suggesting an idea of a result to be accomplished, rather than the means of accomplishing it, does not make someone a co-inventor.


What is NOT an "Intellectual Contribution"

• supplying product for use in the invention 
• derivation (the complete conception of the invention and communication of that conception to another*) of the invention is not inventorship¤ * Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978). ¤ 35 USC 102f
• （發明的完整概念以及將概念與他人溝通之）發明的衍生不是發明人。

MPEP 2138.04 "Conception" [R-1]

AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS

An inventor may consider and adopt ideas, suggestions and materials derived from many sources: a suggestion from an employee, a hired consultant or a friend even if the adopted material proves to be the key that unlocks the problem so long as the inventor "maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting.." Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); Staehelin v. Secher, 24 USPQ2d 1513, 1522 (Bd. Pat. App. & Inter. 1992) ("evidence of conception naming only one of the actual inventive entity inures to the benefit of and serves as evidence of conception by the complete inventive entity").

發明人可以從朋友、員工或顧問亦即專利工程師等各種來源取得建議，只要是發明人保持智慧性的主導以完成測試，選擇或排除，而且即使該建議被證實是解開問題的關鍵。

【2012/12/19更新】
2000年的判例：

已清楚說明，專利律師的任務是幫助發明人取得專利，不能對抗發明人，因此專利律師不能當作發明人。


Intellectual Property Owners Association | Sandra Solomon v. Kimberly-Clark Corp. 00-1033:
" An attorney’s professional responsibility is to assist his or her client in defining her invention to obtain, if possible, a valid patent with maximum coverage. An attorney performing that role should not be a competitor of the client, asserting inventorship as a result of representing his client. Cf. Patent and Trademark Office, U.S. Dep’t of Commerce, Manual of Patent Examining Procedure app. R § 10.64 (7th ed.1998) ("Avoiding acquisition of interest in litigation or proceeding before the [Patent and Trademark] Office"). Thus, to assert that proper performance of the attorney’s role is a ground for invalidating the patent constitutes a failure to understand the proper role of a patent attorney. "

【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）。

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。