2137 Pre-AIA 35 U.S.C. 102(f)
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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A person shall be entitled to a patent unless -
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(f) he did not himself invent the subject matter sought to be patented.
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Where it can be shown that an applicant “derived” an invention from another, a rejection under pre-AIA 35 U.S.C. 102(f) is proper.
- While derivation will bar the issuance of a patent to the deriver, a disclosure by the deriver, absent a bar under pre-AIA 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived.
It is incumbent upon the inventors named in the application, in reply to an inquiry regarding the appropriate inventorship under pre-AIA subsection (f), or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the applicant rather than derived from the author or patentee notwithstanding the authorship of the article or the inventorship of the patent.
I. DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE ALLEGED DERIVER
“The mere fact that a claim recites the use of various components, each of which can be argumentatively assumed to be old, does not provide a proper basis for a rejection under pre-AIA 35 U.S.C. 102(f).”
- Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention.
II. PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY
The party alleging derivation “need not prove an actual reduction to practice in order to show derivation.”
- Furthermore, the application of subsection (f) is not limited to public knowledge derived from another, and “the site of derivation need not be in this country to bar a deriver from patenting the subject matter.”
III. DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION
Although derivation and priority of invention both focus on inventorship, derivation addresses originality (i.e., who invented the subject matter), whereas priority focuses on which party first invented the subject matter.
IV. Pre-AIA 35 U.S.C. 102(f) MAY APPLY WHERE Pre-AIA 35 U.S.C. 102(a) AND Pre-AIA 35 U.S.C. 102(e) ARE NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION
Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where pre-AIA subsections (a) and (e) are not available for references having an effective date subsequent to the effective date of the application being examined.
- However for a reference having a date later than the date of the application some evidence may exist that the subject matter of the reference was derived from the applicant in view of the relative dates.
2137.01 Inventorship
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The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics of U.S. patent law not generally shared by other countries.
- Consequently, foreign applicants may misunderstand U.S. law regarding naming of the actual inventors causing an error in the inventorship of a U.S. application that may claim priority to a previous foreign application under 35 U.S.C. 119.
- A request under 37 CFR 1.48 is required to correct any error in naming the inventors in the U.S. application as filed
- Foreign applicants may need to be reminded of the requirement for the same inventor or at least one common joint inventor between a U.S. application and a 35 U.S.C. 119 priority application.
If a determination is made that the inventive entity named in a U.S. application is not correct, such as when a request under 37 CFR 1.48(a) is not granted or is not entered for technical reasons, but the admission therein regarding the error in inventorship is uncontroverted, a rejection should be made on this basis.
I. NAMING INVENTORSHIP
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64.
- For applications filed before September 16, 2012, pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as otherwise provided.
- Thus the party or parties executing an oath or declaration under pre-AIA 37 CFR 1.63 are presumed to be the inventors.
II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION
The definition for inventorship can be simply stated: “The threshold question in determining inventorship is who conceived the invention.
- Unless a person contributes to the conception of the invention, he is not an inventor. … Insofar as defining an inventor is concerned, reduction to practice, per se, is irrelevant [except for simultaneous conception and reduction to practice. One must contribute to the conception to be an inventor.”
III. AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS
“In arriving at … conception [the inventor] may consider and adopt ideas and materials derived from many sources … [such as] a suggestion from an employee, or hired consultant … so long as he maintains intellectual domination of the work of making the invention down to the successful testing, selecting or rejecting as he goes…even if such suggestion [or material] proves to be the key that unlocks his problem.”
IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE
Difficulties arise in separating members of a team effort, where each member of the team has contributed something, into those members that actually contributed to the conception of the invention, such as the physical structure or operative steps, from those members that merely acted under the direction and supervision of the conceivers.
V. REQUIREMENTS FOR JOINT INVENTORSHIP
The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. “Inventors may apply for a patent jointly even though:
- they did not physically work together or at the same time,
- each did not make the same type or amount of contribution, or
- each did not make a contribution to the subject matter of every claim of the patent.”
“[T]he statute neither states nor implies that two inventors can be ‘joint inventors’ if they have had no contact whatsoever and are completely unaware of each other's work.”
- What is required is some “quantum of collaboration or connection.” In other words, “[f]or persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.”
Each joint inventor must generally contribute to the conception of the invention. A coinventor need not make a contribution to every claim of a patent.
- A contribution to one claim is enough. “The contributor of any disclosed means of a means-plus-function claim element is a joint inventor as to that claim, unless one asserting sole inventorship can show that the contribution of that means was simply a reduction to practice of the sole inventor’s broader concept.”
2137.02 Applicability of Pre-AIA 35 U.S.C. 103(c)
This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA.
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Pre-AIA 35 U.S.C. 103(c) states that subsection (f) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(f), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made.
- Inventorship is generally “by another” where there are different inventive entities with at least one inventor in common.
