Intellectual Property Law

Chapter 19 Discussion Answers

1. Beth has been working at home in Atlanta on an invention for a new single-cup
coffee maker. Review the following fact scenarios and identify which parties are
inventors of the resulting product.

a. As Deenie was visiting Beth one day, Deenie suggested moving the
plug for the coffee maker to the other side of the machine, which Beth
did.
Although joint inventors need not contribute equally to an
invention, to be a joint inventor one must make some
contribution of inventive thought to the resulting product, and
there must be some collaboration between the two parties. In
this case, Deenie’s mere suggestion, which appears to have
been made in passing, is not true collaboration, and Beth is the
sole inventor.

b. Patricia, a talented artist, has made the drawings for the coffee maker,
which will be submitted to the USPTO when the patent application is
filed for the coffee maker.
Merely making drawings of the invention does not make one
an inventor. The fact scenario suggests no collaboration
whatsoever between Patricia and Beth on the product itself.
Thus, Beth is the sole inventor.

c. Bennett, who lives in Seattle, has been frequently video conferencing
with Beth as they both work on the product.
Inventors need not work together or at the same time in order
to be considered joint inventors. In this case, it appears that
Bennett and Beth are collaborating and working together.
Thus, Bennett and Beth are joint inventors.

d. Olivia contributed work to one claim for the patent, and Beth
contributed work to 18 claims for the patent.
To be a joint inventor, one need not make a contribution to
every claim. Thus, if Olivia contributed to one claim, this
should be sufficient to make her a joint inventor.

2. Assume that Beth has been working on the single-cup coffee maker for her
employer, Good Times Manufacturing, Inc. After Beth finished her work on the
product and began working on another project, a new employee Randy continued
to tinker with the coffee maker to finish it.

a. Are Beth and Randy joint inventors? Discuss.
No. To be joint inventors, there must be collaboration between
the two parties. In this case, it appears that Beth was
completely ignorant of what Randy had done. Thus they
cannot be joint inventors because their contributions to the
product were made by each party separately with no
collaboration.

b. Who is the owner of the invention? Discuss.
If the parties have an agreement about who will own the
invention, it will control. If there is no agreement, generally the
employees retain ownership rights, subject to a shop right in
favor of the employer (which can then make and use the
invention in the business under a nonexclusive and royalty-free
license). If Beth and Randy were hired specifically to invent the
item, however, then the employer will own the invention.

3. Assume that Cooper and Will are joint inventors of a new watch, for which a
patent was granted last year. May Will license the patent without Cooper’s
consent? Discuss.
Yes. In the absence of an agreement to the contrary, each joint owner
of a patent may make, use, license, offer to sell, or sell the patented
invention without the consent of and without accounting to the other
owners. Thus, Will may enter into a license with a third party without
obtaining Cooper’s consent and without accounting to Cooper for the
profits. To avoid such problems, the parties should have an
agreement.

4. Jack’s patent was granted in 2000. In 2005, he granted a license to Connor to use
the patented invention, for which Connor pays royalties. The license agreement
says that it will last for 30 years. Review the Case Illustration for this chapter and
discuss Connor’s obligations to pay continuing royalties for the invention.
Under the Kimble v. Marvel Entertainment case that is the subject of
the case illustration for Chapter 19, a patent holder cannot charge
royalties for the use of his/her invention after its patent term has
expired. Thus, once the patent expires in 2020, Connor need not pay
any further royalties. The patent will enter the public domain in 2020
and be free for all to use without payment of royalty or fear of
infringement.

5. Why should a patent assignment be recorded with the USPTO?
There is no requirement that an assignment of patent be recorded
with the USPTO in order for it to be valid. However, the assignment
should be recorded because it will be void as against any subsequent
purchaser for a valuable consideration, without notice, unless it is
recorded in the USPTO within three months from its date or prior to
the date of such subsequent purchase. 35 U.S.C. § 261. Any
assignment must be in writing.