Editing MPEP 2137

<noinclude>{{MPEP Section|2136|2100|2138}}</noinclude>

==[[MPEP 2137|2137 35 U.S.C. 102(f)]]==

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{{Statute|35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.}}
A person shall be entitled to a patent unless -
{{Ellipsis}}
(f)he did not himself invent the subject matter sought to be 
patented.
{{Ellipsis}}
|}


Where it can be shown that an applicant "derived" 
an invention from another, a rejection under 35 U.S.C. 
102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 
(Bd. App. 1981) (“most, if not all, determinations 
under section 102(f) involve the question of whether 
one party derived an invention from another”).

While derivation will bar the issuance of a patent to 
the deriver, a disclosure by the deriver, absent a bar 
under 35 
U.S.C. 102(b), will not bar the issuance of a 
patent to the party from which the subject matter was 
derived. In re Costello, 717 F.2d 1346, 1349, 
219 
USPQ 389, 390-91 (Fed. Cir. 1983) (“[a] prior art 
reference that is not a statutory bar may be overcome 
by two generally recognized methods”: an affidavit 
under 37 CFR 1.131, or an affidavit under 37 CFR 
1.132 “showing that the relevant disclosure is a 
description of the applicant’s own work”); In re 
Facius, 408 F.2d 1396, 1407, 161 USPQ 294, 302 
(CCPA 1969) (subject matter incorporated into a 
patent that was brought to the attention of the patentee 
by applicant, and hence derived by the patentee from 
the applicant, is available for use against applicant 
unless applicant had actually invented the subject 
matter placed in the patent).

Where there is a published article identifying the 
authorship (MPEP § 715.01(c)) or a patent identifying 
the inventorship (MPEP § 715.01(a)) that discloses 
subject matter being claimed in an application undergoing 
examination, the designation of authorship or 
inventorship does not raise a presumption of inventorship 
with respect to the subject matter disclosed in the 
article or with respect to the subject matter 
disclosed 
but not claimed in the patent so as to justify 
a rejection under 35 U.S.C. 102(f). However, it is 
incumbent upon the inventors named in the application, 
in reply to an inquiry regarding the appropriate 
inventorship under subsection (f), or to rebut a rejection 
under 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. In re Katz, 
687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) 
(inquiry is appropriate to clarify any ambiguity created 
by an article regarding inventorship, and it is then 
incumbent upon the applicant to provide “a satisfactory 
showing that would lead to a reasonable conclusion 
that [applicant] is the…inventor” of the subject 
matter disclosed in the article and claimed in the 
application).

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 35 U.S.C. 102(f).” Ex parte 
Billottet, 192 USPQ 413, 415 (Bd. App. 1976). 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. Kilbey 
v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).

See also Price v. Symsek, 988 F.2d 1187, 1190, 
26 
USPQ2d 1031, 1033 (Fed. Cir. 1993); Hedgewick v. 
Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA 
1974). “Communication of a complete conception must 
be sufficient to enable one of ordinary skill in the art to 
construct and successfully operate the invention.” 
Hedgewick, 497 F.2d at 908, 182 USPQ at 169. See also 
Gambro Lundia AB v. Baxter Healthcare Corp., 110 
F.3d 1573, 1577, 42 USPQ2d 1378, 1383 (Fed. Cir. 
1997) (Issue in proving derivation is “whether the communication 
enabled one of ordinary skill in the art to 
make the patented invention.”).

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.” 
Scott v. Brandenburger, 216 USPQ 326, 327 
(Bd. App. 1982). 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.” Ex parte Andresen, 212 USPQ 100, 102 
(Bd. App. 1981).

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. Price v. Symsek, 988 F.2d 1187, 1190, 
26 
USPQ2d 1031, 1033 (Fed. Cir. 1993).

35 U.S.C. 102(f) MAY APPLY WHERE 35 U.S.C. 
102(a) AND 35 U.S.C. 102(e) ARE NOT AVAILABLE 
STATUTORY GROUNDS FOR REJECTION


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 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. Ex parte Kusko, 215 USPQ 972, 
974 (Bd. App. 1981) (The relative dates of the events 
are important in determining derivation; a publication 
dated more than a year after applicant’s filing date 
that merely lists as literary coauthors individuals other 
than applicant is not the strong evidence needed to 
rebut a declaration by the applicant that he is the sole 
inventor.).

===2137.01 Inventorship===

The requirement that the applicant for a patent be 
the inventor is a characteristic 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(a)
is required to correct any error in naming the inventors 
in the U.S. application as filed. MPEP § 201.03. 
Foreign applicants may need to be reminded of the 
requirement for identity of inventorship between a 
U.S. application and a 35 U.S.C. 119 priority application. 
MPEP § 201.13. 

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 under 35 U.S.C. 102(f) should 
be made. 

I.EXECUTORS OF OATH OR DECLA-
RATION UNDER 37 CFR 1.63 ARE PRE-
SUMED TO BE THE INVENTORS

The party or parties executing an oath or declaration 
under 37 CFR 1.63 are presumed to be the inventors. 
Driscoll v. Cebalo, 5 USPQ2d 1477, 1481 (Bd. 
Pat. Inter. 1982); In re DeBaun, 687 F.2d 459, 463, 
214 USPQ 933, 936 (CCPA 1982) (The inventor of an 
element, per se, and the inventor of that element as 
used in a combination may differ. “The existence of 
combination claims does not evidence inventorship by 
the patentee of the individual elements or subcombinations 
thereof if the latter are not separately claimed 
apart from the combination.” (quoting In re Facius, 
408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 
1969) (emphasis in original)); Brader v. Schaeffer, 
193 USPQ 627, 631 (Bd. Pat. Inter. 1976) (in regard 
to an inventorship correction: “[a]s between inventors 
their word is normally taken as to who are the actual 
inventors” when there is no disagreement). 

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, Fiers v. Revel, 984 F.2d 1164, 1168, 
25 
USPQ2d 1601, 1604-05 (Fed. Cir. 1993)]. One 
must contribute to the conception to be an inventor.” 
In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 
1984). See also Board of Education ex rel. Board of 
Trustees of Florida State Univ. v. American Bioscience 
Inc., 333 F.3d 1330, 1340, 67 USPQ2d 1252, 
1259 (Fed. Cir. 2003) (“Invention requires conception.” 
With regard to the inventorship of chemical 
compounds, an inventor must have a conception of 
the specific compounds being claimed. “[G]eneral 
knowledge regarding the anticipated biological properties 
of groups of complex chemical compounds is 
insufficient to confer inventorship status with respect 
to specifically claimed compounds.”); Ex parte Smernoff, 
215 USPQ 545, 547 (Bd. App. 1982) (“one who 
suggests an idea of a result to be accomplished, 
rather 
than the means of accomplishing it, is not an 
coinventor”). See MPEP § 2138.04 - § 2138.05 for a 
discussion of what evidence is required to establish 
conception or reduction to practice. 

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.” 
Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. 
Inter. 1965). See also New England Braiding Co. v.
A.W. Chesterton Co., 970 F.2d 878, 883, 23 USPQ2d 
1622, 1626 (Fed. Cir. 1992) (Adoption of the ideas 
and materials from another can become a derivation.). 

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. Fritsch v. Lin, 21 USPQ2d 
1737, 1739 (Bd. Pat. App. & Inter. 1991) (The inventor 
“took no part in developing the procedures…for 
expressing the EPO gene in mammalian host cells and 
isolating the resulting EPO product.” However, “it is 
not essential for the inventor to be personally 
involved in carrying out process steps…where implementation 
of those steps does not require the exercise 
of inventive skill.”); In re DeBaun, 687 F.2d 459, 463, 
214 USPQ 933, 936 (CCPA 1982) (“there is no 
requirement that the inventor be the one to reduce the 
invention to practice so long as the reduction to practice 
was done on his behalf”).

See also Mattor v. Coolegem, 530 F.2d 1391, 1395, 
189 USPQ 201, 204 (CCPA 1976) (one following oral 
instructions is viewed as merely a technician); Tucker 
v. Naito, 188 USPQ 260, 263 (Bd. Pat. Inter. 1975) 
(inventors need not “personally construct and test 
their invention”); Davis v. Carrier, 81 F.2d 250, 252, 
28 USPQ 227, 229 (CCPA 1936) (noninventor’s work 
was merely that of a skilled mechanic carrying out the 
details of a plan devised by another). 

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 (1) 
they did not physically work together or at the same 
time, (2) each did not make the same type or amount 
of contribution, or (3) each did not make a contribution 
to the subject matter of every claim of the 
patent.” 35 U.S.C. 116. “[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.” Kimberly-Clark 
Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 
916-17, 23 USPQ2d 1921, 1925-26 (Fed. Cir. 1992); 
Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 
1960) (“it is not necessary that the inventive concept 
come to both [joint inventors] at the same time”).

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.” Ethicon 
Inc. v. United States Surgical Corp., 135 F.3d 1456, 
1460-63, 45 USPQ2d 1545, 1548-1551 (Fed. Cir. 
1998) (The electronics technician who contributed to 
one of the two alternative structures in the specification 
to define “the means for detaining” in a claim 
limitation was held to be a joint inventor.).

VI.INVENTORSHIP IS GENERALLY "TO ANOTHER" 
WHERE THERE ARE DIFFERENT 
INVENTIVE ENTITIES WITH AT 
LEAST ONE INVENTOR IN COMMON

"[A] joint application or patent and a sole application 
or patent by one of the joint inventors are [by] 
different legal entities and accordingly, the issuance 
of 
the earlier filed application as a patent becomes a 
reference for everything it discloses" (Ex parte 
Utschig, 156 USPQ 156, 157 (Bd. App. 1966)) except 
where:

(A)the claimed invention in a later filed application 
is entitled to the benefit of an earlier filed application 
under 35 U.S.C. 120 (an overlap of inventors 
rather than an identical inventive entity is permissible). 
In this situation, a rejection under 35 U.S.C. 
102(e) is precluded. See Applied Materials Inc. v.
Gemini Research Corp., 835 F.2d 279, 281, 
15 
USPQ2d 1816, 1818 (Fed. Cir. 1988) ("The fact 
that an application has named a different inventive 
entity than a patent does not necessarily make that 
patent prior art."); and 

(B)the subject matter developed by another person 
and the claimed subject matter were, at the time 
the invention was made, owned by the same person or 
subject to an obligation of assignment to the same 
person or involved in a joint research agreement 
which meets the requirements of 35 U.S.C. 103(c)(2) 
and (c)(3). In this situation, a rejection under 
35 
U.S.C. 102(f)/103 or 102(g)/103, or 102(e)/103 for 
applications filed on or after November 29, 1999 or 
pending on or after December 10, 2004, is precluded 
by 35 U.S.C. 103(c) once the required evidence has 
been made of record in the application. See MPEP 
§ 706.02(l) and § 706.02(l)(1).

For case law relating to inventorship by “another” 
involving different inventive entities with at least one 
inventor in common see Ex parte DesOrmeaux, 
25 
USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (the 
presence of a common inventor in a reference patent 
and a pending application does not preclude the determination 
that the reference inventive entity is to 
"another" within the meaning of 35 U.S.C. 102(e)) 
and the discussion of prior art available under 
35 
U.S.C. 102(e) in MPEP § 2136.04.

===2137.02 Applicability of 35 U.S.C. 103(c)===

35 U.S.C. 103(c) states that subsection (f) of 
35 
U.S.C. 102 will not preclude patentability where 
subject matter developed by another person, that 
would otherwise qualify under 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 35 U.S.C. 103(c)(2) and (c)(3),
at the time the invention was made. See MPEP 
§ 706.02(l) and § 2146.