It goes without saying that rights in trade secrets and other confidential information (CI) can be lost by outright nonconfidential disclosures to third parties.
Normally, if some information a third party learns of is not otherwise subject to some confidentiality restriction, or to some patent right, or where appropriate, the subject matter is not protected by copyright, or it is not otherwise known to be under any trade secret protection (and the information is legitimately acquired), that information is then free to be used by the third party without restriction. It is often said that ideas and information themselves do not care who knows or uses them.
Under U.S. Patent law2 any co-inventor, not otherwise subject to an assignment of rights or a suitable joint commercialization agreement being in place, is free to commercialize the joint invention without obtaining the consent of and accounting to any other joint inventor.
Basically, a joint invention occurs when two or more persons collaborate to produce the invention through their aggregate efforts and at least one claim in a patent application is reflective of each inventor’s inventive contribution. (Collaboration here is in the sense of joint efforts or working under common direction.)
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The true inventor contributed to the conception of the invention. Conception here is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice.”3 This means that the invention must be so complete and definite that only ordinary skill would be necessary to reduce the invention to practice, which includes making a working prototype or example of the invention, without extensive research or experimentation.4 Thus, one who recognizes a problem is (normally) not considered an inventor. Rather, the party who conceives the solution to the problem is the true inventor.
Generally, the party that conceives the ultimate overall solution, and controls the invention’s development process to successful testing (or preparation and filing of a patent application), is normally considered the inventor, as against any other who merely provides a general suggestion, or recites to the inventor the current status of the art, or provides an obvious element or well-known principle.
An inventor “may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent.”5 However, such contribution or assistance from others does not give rise to joint inventorship unless it contributes to conception of the invention. For example, merely suggesting a technology or an existing, available device that may be useful in solving a problem does not contribute to conception unless the suggestion includes the specific improvement or insight that makes the overall invention new and distinct from what came before, allowing one of ordinary skill in that discipline to create the invention without employing any creativity or ingenuity of their own.6
In conceiving the invention, the inventor may consider and adopt (or reject) outside ideas and materials from many sources, such as suggestions from a colleague, employee or hired consultant, as long as the inventor maintains intellectual domination and control of the work of making the invention, including control over testing and development. Even if such suggestions or materials prove to be the key to the technical problem, that does not constitute inventorship and does not diminish the role of the person controlling the inventive process.7
Many third-party contributions (especially when the outsider is not working in a collaborative relationship with the true innovator, i.e., primary inventor, or when the third party has no control over the direction and scope of the inventive efforts) may simply be noninventive. For example, the third party may supply a general suggestion, i.e., a general (or even specific) response to a general hypothetical question put to them, that doesn’t contribute to the inventive process.
One does not qualify as a joint inventor merely by assisting the actual inventor after conception of the invention has occurred.8 For example, contributing, rather than to the conception, but only to reducing the invention to practice (e.g., making a workable example of the invention) does not make one an inventor.
Tips for Third-Party Disclosure
The goal with third-party disclosures, whether in the biomass or biofuel area or otherwise, is to assure that any outside suggestions received, under all the circumstances, do not rise to the level of an inventive contribution necessary to establish co-inventorship with the inventor’s ongoing efforts unless one is able to negotiate an assignment of resulting IP rights. Thus, there are general tips for making necessary limited disclosures of CI to persons and entities outside one’s company.
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