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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Pre-AIA 35 U.S.C. 102(f) bars the issuance of a patent where an applicant did not invent the subject matter being claimed and sought to be patented.
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.
