First to File: Patents for Today's Scientist and Engineer

Chapter 5 Inventing in an Employment Environment: The AIA's New Recognition of Employer Interests and Project Management

It has always been a goal of intellectual property law to encourage creativity, to promote the exchange of new ideas, and to advance the state of the art by allowing individuals who do so to reap the rewards of their efforts. As a result, the legal system has traditionally favored the inventor when dealing with conflicts between the inventor and a business entity, particularly the inventor's employer that claims an interest in the invention. Employers do have legitimate interests, of course, and as business and commerce continually expand, there has been an increasing recognition that laws and regulations that are centered on the inventor at times run contrary to the practicalities of the employment environment by failing to recognize the contribution that the environment itself can make to the inventing process. In some cases, this has placed employers at a disadvantage. The AIA recognizes this and introduces significant changes in the status of employers in the process of obtaining patents. These changes appear in two principal areas—defining what is and is not prior art and allowing the employer to substitute for the inventor in the procedure for filing a patent application.

5.1 Project Management and the New Definition of Prior Art

As noted in Chapter 2, one subclass of prior art that can be cited against a patent application to challenge the ...