Are you an inventor? If you are, certain rights and responsibilities come with the territory and it is important that you understand what protections the law affords you and in turn, what duties you have under the law. Inventorship refers to the person who materially contributed to the invention. This is a human being. It should not be a corporation or legal entity, but rather the person or people that helped with the actual conception of your idea. This inventorship includes people who work together during that time of conception to jointly come up with the idea together.
What it does not include are assistants or engineers who merely helped bring your invention into physical form. So the inventor is the person who conceived of the idea, but not necessary the one who put that idea into a working model or prototype. Therefore, what matters most in determining who holds inventorship is determining who contributed to the invention’s concept. Under US law, inventorship relies on an objective test, so we cannot just put our professor or friends up as an inventor. Instead, we must include only those people who materially contributed to the inventive concept as the inventors.
With the right of inventorship comes the duty of candor. In addition to inventorship, duty of candor is also something that you must understand. Having a duty of candor means that you have a responsibility under US law to be very clear with the Patent Office about things that you know of that might indicate that similar inventions existed prior to yours. So any patent applications that you know of, any prior publications that you have made or that you know of, or any public disclosures of your invention or offers for sale of your invention, must be made known to the Patent Office. As damaging as these instances of existing inventions might be to your claim to your own concept, you cannot hide them. Instead, you should go out and make sure that these instances are recorded and filed in an information disclosure statement (IDS) that you will submit at the end of the preparation phase of your application by following the steps in this section and the sections that will follow. That information disclosure statement will help to fulfill your duty of candor. You should also do a search on other inventions that existed prior to yours.
A good resource is the Google Patent Search. If you go to http://www.google.com/patents, you will find a highly accessible database in which to do an initial search for pending applications and previously issued patents by entering keywords and search phrases that might be similar to what you have invented or to the area of technology surrounding your invention.
Now, under US law, you do not have any specific duty to do that search. You do have a duty, however, to disclose all the things that you know about at the time you prepare your application. If you do perform a search, you will have to disclose anything similar to your invention that you find in that search. While the search is not required, it is recommended because it can save you a great deal of time and money that would otherwise be spent on an idea whose time has already come! You want to make sure you are filing patent applications in areas where you have a good chance of being granted a limited monopoly right that the patent affords to you. In that process, the patent examiner or the Patent Office is going to be doing this search anyway, so it makes sense to do the search on your own. The other thing to keep in mind when you do a search, in addition to your requirements to now disclose things that you learn from your search, is doing your search is a tricky area. If you do a search, you have to not only search patents but any other products, services, publications that might affect your patentability.
Another good thing to do, even before deciding whether to build your business in this area, is to do a general Google Search, not just the Google Patent Search, and make sure that there are no competing businesses in your area because they would basically be doing exactly what you are doing. If there are, you might want to think about exactly what is the business that you are trying to build.
To this point, the primary goal has been to identify who is the inventor, as well as explain the duty of candor in that as an inventor you have to make sure you disclose everything that you know of, that might affect your invention’s patentability, to the Patent Office and the requirement of prior art searches are not necessary. It is in your advantage just to disclose everything you know, because when you do disclose things in the Patent Office that are material to patentability, you get a presumption of validity over those references, and those references cannot be used to easily invalidate any issue in patent that might result from your invention. You have a presumption of validity over those references.