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Abstract

Imagine the following: It's New Year's Eve, 1994, and as twilight falls you start to clean off your desk and get ready to go home. On top of your "Out" tray is a copy of a patent application for American Corporation that you filed with the Patent and Trademark Office last week. A-Corp., one of your largest clients, is the nation's largest manufacturer of business office furniture. The patent application is for A-Corp's new "Security Cabinet," a device that protects sensitive computer disks and video- tapes from electromagnetic contamination. The Security Cabinet was unveiled at an office supply trade show in Las Vegas over the summer, and sales have been brisk ever since. Both the R & D and Sales departments at A-Corp. consider the success of the Security Cabinet to be a feather in their cap. As a result, the company would like to develop an entire Security Cabinet product line. However, before making such an investment, A-Corp. wanted to acquire patent protection for the device to secure its position at the top of the market. The phone rings as you remember that drafting the claims and completing the application for the Security Cabinet were routine. On the other end of the line is the head of A-Corp.'s R & D department. "Have you filed the patent application for the Security Cabinet yet?" he asks, almost out of breath. You tell him that the application was delivered to the Patent and Trademark Office in Arlington just this week. "Well," he says, "we may have a problem. My staff keeps tabs on the market to see what kind of office products are out there, and we've found two other companies that are selling rip-offs of our Security Cabinet! One is made here in the U.S. and the other is made in Canada. And they both say 'U.S. Patent Applied For' on them! What are we going to do?" The above account opens a Pandora's box of possibilities that may help or hinder the fictional A-Corp and its patent counsel in its pursuit of patent protection. Disputes often arise between parties who independently claim patent rights in an invention. The protectionistic laws by which these disputes traditionally have been resolved have changed dramatically in the past twelve months and, because of recently enacted legislation, will change dramatically again in the near future. This paper provides a context in which to examine inventorship disputes by surveying the fundamentals of United States patent law. In addition, this document analyzes the traditional manner in which inventorship disputes have been resolved, as well as the extraordinary impact recent changes in the law will have on the resolution of patent disputes in the United States.

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