2109 Inventorship
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Section Frequency Chart
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| 2109 |
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. 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.
IV. 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.”
V. INVENTORSHIP "BY ANOTHER"
Inventorship is generally "by another" where there are different inventive entities and there is at least one inventor that is not in common.
For information relating to inventorship by "another" involving different inventive entities with at least one inventor in common, see MPEP § 2153.01(a) for applications subject to examination under the first inventor to file (FITF) provisions of the AIA, and MPEP § 2136.04 for applications subject to examination under pre-AIA law.
VI. EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120
An application claiming the benefit of a prior filed copending national or international application under 35 U.S.C. 120 must name as an inventor at least one inventor named in the prior filed application.
2109.01 Joint Inventorship
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» 2111 Claim Interpretation; Broadest Reasonable Interpretation
