In the US, patents are presumed to be valid. However, the presumption is rebuttable and is usually challenged during patent infringement litigation. The validity of patents can be attacked in various ways, including:
1. Lack of Enablement.
In general, the patented invention must be disclosed in a manner that allows a person of ordinary skill to make and use the invention. This is the consideration the government is bargaining for when it gives the patent holder exclusive rights to the patented invention for several years. The rationale is that the government wants to promote the progress of science and technology, and by encouraging inventors to disclose their inventions to the public through their patents, the public may later use the technology once the patent term is over. If the invention is not adequately disclosed, and undue experimentation is required to make and use the invention described in the patent disclosure, the patent will be considered invalid and unenforceable.
2. Lack of Candor
The US patent examination process is conducted in an ex parte manner. Only the applicant (or the applicant's representative) and the patent examiner are involved in the process. No third parties are involved. Third parties are not given any opportunities, at least during the examination, to voice out their reasons against granting the patent, and thus the system relies on the applicant's candor. US patent laws require applicants to disclose any prior art known to them as well as any activities that have material implications on the patentability of the invention, such as offers for sale, public use, or public disclosure. These things are usually disclosed through an Information Disclosure Statement or IDS. If no IDS has been submitted during the course of the application, the validity of the patent may be questionable.
3. Wrong Investors Listed
It is crucial to name the right inventors on a patent application. A patent can later be invalidated if it did not include the correct inventors. Inventors and patent owners should not be confused. Inventors are defined under US patent laws as those that have contributed to the conception of the invention. If the idea was conceived by an employee of your company and you were not involved in the conception, you should not list yourself as an inventor simply because you want to make sure you own the patent. The appropriate action to take is to have the employee assign his rights over the invention to the company.
Another situation where inventors are often mistakenly identified is one involving research teams. Once again, only list those that were involved in the conception. Just because a researcher happened to work on the project does not automatically make him an inventor. The researcher may happen to be involved in refining the invention to make it work more efficient. This generally does not constitute conception, and the researcher should not be listed as an inventor in the patent application.
Another situation where wrong inventors are often listed involves supervisors and lower ranking employees. If the idea was conceived by a lower ranking employee, it does not mean that you have to list the employee's supervisor as the inventor. The key is to determine who contributed to the conception of the invention that is claimed in the patent application.
Because there are many nuances in obtaining patents, it is important to seek the advice and guidance from a registered patent attorney.
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