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awshum
New Contributor

Changing the way we consider Patent Authors

As chemist, it can be insulting to be referred to as a "set of hands" especially after spending months on a project and contributing valuable compounds.  Maybe the chemist didn't develop the compound list/ideas, but he/she executed it (which may have involved troubleshooting) and therefore should still gain recognition on the patent.  In addition, having that patent to add to one's resume would be nice at any level.

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chucksz
New Contributor

Re: Changing the way we consider Patent Authors

Kyle,

While I sympathize with your point of view, the patent laws of the United States take very seriously the identity of inventors on a patent.  Perhaps it is because of the authorization in Article 1 Section 8 of the U.S. Constiution, which reads in part

The Congress shall have the power... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

"Authors" are usually protected by copyright.  It would be perfectly fair to make you an "author" on a scientific paper but if you didn't make an inventive contribution to at least one claim in the patent application, you can't be considered an "inventor."  Indeed, the knowing misjoinder of a non-inventor on a patent may lead the patent to be declared invalid by a court.  However, not including an inventor who should have been included (nonjoinder) can put the patent in danger as well.

As an inventor, it has been my practice to invite inventive contributions from my colleagues so that their good work on a project can be acknowledged.  While it has not always worked out that way, I sometimes succeed in getting everyone included this way.

If I may suggest, take every opportunity to suggest inventive contributions to your project.  Become familiar with the structure of patent claims and, when the time comes to write a patent application, suggest claims in which you made an inventive contribution.  To make such a contribution, the claim need not be an independent claim.  You could be an inventor of a dependent claim such as

2.  The detergent formulation of Claim 1, further comprising: a buffer chosen from A, B and C.

Let's say that your experiments identified B as one of the buffers.  That would usually (maybe not always - it might depend on what B is) be enough to have you named as an inventor.

The best place to get advice on whether you are an inventor is your patent attorney or agent.

Good luck.

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awshum
New Contributor

Re: Changing the way we consider Patent Authors

Thanks for the input Charles.

Using the concept of parallel synthesis, I guess it would be easy to suggest compound ideas (especially if there is a database of reactive compunds -ex. amines- available to search through).

I just feel like people with higher degrees are given the time to think, explore, and develop their plans.  Associates seem to crank out tons of compounds and aid executing ideas, just not their own. I may be speaking on behalf of some associates, when we find ourselves doing a lot "other" work for the group (shipping, labeling, etc.--secretarial work) that limits our time.  Guess I'll have to look into grad school so someone else can be the new associate at the bottom of the totem pole.

I also feel like there isn't much talk about this from undergrad into the transition of the working world.  I'm no longer new, but speaking on behalf of students that decide to put off grad school for a little awhile, I hope they understand the importance of being a contributor and getting their names on patents.  It's nice getting some recognition for all the work you do, and it's good for the resume.

It can also seem rediculous that patents can claim structures that were never physically made.  That one, I'll never understand.

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