MPEP 2137: Difference between revisions

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==[[MPEP 2137|2137 35 U.S.C. 102(f)]]==
==[[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.}}
{{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 -
A person shall be entitled to a patent unless -
{{Ellipsis}}
{{Ellipsis}}
(f)he did not himself invent the subject matter sought to be  
{{tab1}}(f) he did not himself invent the subject matter sought to be patented.</p>
patented.
{{Ellipsis}}
{{Ellipsis}}
|}
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Where it can be shown that an applicant "derived"  
Where it can be shown that an applicant "derived"  
an invention from another, a rejection under 35 U.S.C.  
an invention from another, a rejection under 35 U.S.C.  
102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974
102(f) is proper.
(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  
While derivation will bar the issuance of a patent to  
the deriver, a disclosure by the deriver, absent a bar  
the deriver, a disclosure by the deriver, absent a bar  
under 35  
under 35 U.S.C. 102(b), will not bar the issuance of a  
U.S.C. 102(b), will not bar the issuance of a  
patent to the party from which the subject matter was  
patent to the party from which the subject matter was  
derived. In re Costello, 717 F.2d 1346, 1349,
derived.
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
Such a derived prior art reference may be overcome by two generally recognized methods:
authorship (MPEP § 715.01(c)) or a patent identifying
*an affidavit under [[37 CFR 1.131]], or
the inventorship (MPEP § 715.01(a)) that discloses
*an affidavit under [[37 CFR 1.132]] showing that the relevant disclosure is a description of the applicant's own work").
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
It is the burden of the applicant to provide a satisfactory showing that the applicant is the inventor of the subject matter disclosed in a publication and claimed in the application.
BY ANOTHER AND COMMUNICATION
TO THE ALLEGED DERIVER


“The mere fact that a claim recites the use of various  
======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  
components, each of which can be argumentatively  
assumed to be old, does not provide a proper  
assumed to be old, does not provide a proper  
basis for a rejection under 35 U.S.C. 102(f).” Ex parte
basis for a rejection under 35 U.S.C. 102(f).
Billottet, 192 USPQ 413, 415 (Bd. App. 1976). Derivation  
 
requires complete conception by another and  
Derivation requires complete conception by another and  
communication of that conception by any means to  
communication of that conception by any means to  
the party charged with derivation prior to any date on  
the party charged with derivation prior to any date on  
which it can be shown that the one charged with derivation  
which it can be shown that the one charged with derivation  
possessed knowledge of the invention. Kilbey
possessed knowledge of the invention.
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  
======PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY======
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
The party alleging derivation need not prove 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.
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  
======DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION======
OF INVENTION


Although derivation and priority of invention both  
Although derivation and priority of invention both  
focus on inventorship, derivation addresses originality  
focus on inventorship, derivation addresses originality  
(i.e., who  
(i.e., who invented the subject matter), whereas priority  
invented the subject matter), whereas priority  
focuses on which party first invented the subject  
focuses  
matter.
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) 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  
35 U.S.C. 102(f) does not require an inquiry into  
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some evidence may exist that the subject matter of the  
some evidence may exist that the subject matter of the  
reference was derived from the applicant in view of  
reference was derived from the applicant in view of  
the relative dates. Ex parte Kusko, 215 USPQ 972,
the relative dates.
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===
===2137.01 Inventorship===
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may claim priority to a previous foreign application  
may claim priority to a previous foreign application  
under 35 U.S.C. 119. A request under 37  
under 35 U.S.C. 119. A request under 37  
CFR 1.48(a)
CFR 1.48(a) is required to correct any error in naming the inventors  
is required to correct any error in naming the inventors  
in the U.S. application as filed. [[MPEP_201#201.03_Correction_of_Inventorship_in_an_Application|MPEP § 201.03]].
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  
If a determination is made that the inventive entity  
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be made.  
be made.  


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


The party or parties executing an oath or declaration  
The party or parties executing an oath or declaration under 37 CFR 1.63 are presumed to be the inventors.
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  
======II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION======
THE CONCEPTION OF THE INVENTION


The definition for inventorship can be simply  
The definition for inventorship can be simply  
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is who conceived the invention. Unless a person  
is who conceived the invention. Unless a person  
contributes to the conception of the invention, he  
contributes to the conception of the invention, he  
is not an inventor. … Insofar as defining an inventor is  
is not an inventor. . . . Insofar as defining an inventor is  
concerned, reduction to practice, per se, is irrelevant  
concerned, reduction to practice, per se, is irrelevant  
[except for simultaneous conception and reduction to  
[except for simultaneous conception and reduction to  
practice, Fiers v. Revel, 984 F.2d 1164, 1168,
practice]. One must contribute to the conception to be an inventor.”  
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.  
In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat.  
1984). See also Board of Education ex rel. Board of
1984).
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  
With regard to the inventorship of chemical  
compounds, an inventor must have a conception of  
compounds, an inventor must have a conception of  
the specific compounds being claimed. “[G]eneral
the specific compounds being claimed.  
knowledge regarding the anticipated biological properties
 
of groups of complex chemical compounds is
See [[MPEP_2138#2138.04_"Conception"|MPEP § 2138.04]] - [[MPEP_2138#2138.05_"Reduction_to_Practice"|§ 2138.05]] for a discussion of what evidence is required to establish  
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.  
conception or reduction to practice.  


III.AS LONG AS THE INVENTOR MAINTAINS  
======III. AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS======
INTELLECTUAL DOMINATION  
OVER MAKING THE INVENTION, IDEAS,  
SUGGESTIONS, AND MATERIALS MAY  
BE ADOPTED FROM OTHERS  


“In arriving at … conception [the inventor] may  
“In arriving at … conception [the inventor] may  
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or rejecting as he goes…even if such suggestion [or  
or rejecting as he goes…even if such suggestion [or  
material] proves to be the key that unlocks his problem.”  
material] proves to be the key that unlocks his problem.”  
Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat.  
''[[Morse v. Porter]]'', 155 USPQ 280, 283 (Bd. Pat. Inter. 1965).
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


======IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE======


Difficulties arise in separating members of a team  
Difficulties arise in separating members of a team  
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physical structure or operative steps, from those members  
physical structure or operative steps, from those members  
that merely acted under the direction and supervision  
that merely acted under the direction and supervision  
of the conceivers. Fritsch v. Lin, 21 USPQ2d
of the conceivers.
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,
However, “it is not essential for the inventor to be personally
189 USPQ 201, 204 (CCPA 1976) (one following oral
involved in carrying out process steps . . . where implementation
instructions is viewed as merely a technician); Tucker
of those steps does not require the exercise of inventive skill.”
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
*One following oral instructions is viewed as merely a technician.
*Inventors need not personally construct and test their invention.
*A noninventor's work can merely be 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  
The inventive entity for a particular application is  
based on some contribution to at least one of the  
based on some contribution to at least one of the  
claims made by each of the named inventors. “Inventors
claims made by each of the named inventors. Inventors may apply for a patent jointly even though:
may apply for a patent jointly even though (1)
*they did not physically work together or at the same time,
they did not physically work together or at the same  
*each did not make the same type or amount of contribution, or
time, (2) each did not make the same type or amount  
*each did not make a contribution to the subject matter of every claim of the patent.
of contribution, or (3) each did not make a contribution  
 
to the subject matter of every claim of the  
[[35_U.S.C.#35_U.S.C._116_Inventors.|35 U.S.C. 116]] 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." 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." It is not necessary that the inventive concept come to both joint inventors at the same time.
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  
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.
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"  
======VI. INVENTORSHIP IS GENERALLY "TO ANOTHER" WHERE THERE ARE DIFFERENT INVENTIVE ENTITIES WITH AT LEAST ONE INVENTOR IN COMMON======
WHERE THERE ARE DIFFERENT  
INVENTIVE ENTITIES WITH AT  
LEAST ONE INVENTOR IN COMMON


"[A] joint application or patent and a sole application  
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 except where:
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  
{{tab1}}(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; and</p>
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  
{{tab1}}(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). See MPEP § 706.02(l) and § 706.02(l)(1).</p>
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”  
For case law relating to inventorship by “another”  
involving different inventive entities with at least one  
involving different inventive entities with at least one  
inventor in common see Ex parte DesOrmeaux,  
inventor in common see ''[[Ex parte DesOrmeaux]]'', 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (the  
25  
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.
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)===
===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. 103(c) states that subsection (f) of  
35  
35 U.S.C. 102 will not preclude patentability where  
U.S.C. 102 will not preclude patentability where  
subject matter developed by another person, that  
subject matter developed by another person, that  
would otherwise qualify under 35 U.S.C. 102(f), and  
would otherwise qualify under 35 U.S.C. 102(f), and  
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involved in a joint research agreement, which meets  
involved in a joint research agreement, which meets  
the requirements of 35 U.S.C. 103(c)(2) and (c)(3),
the requirements of 35 U.S.C. 103(c)(2) and (c)(3),
at the time the invention was made. See MPEP  
at the time the invention was made. See [[MPEP_706#706.02.28l.29_Rejections_Under_35_U.S.C._103.28a.29_Using_Prior_Art_Under_Only_35_U.S.C._102_.28e.29.2C_.28f.29.2C_or_.28g.29|MPEP § 706.02(l)]] and [[MPEP 2146|§ 2146]].
§ 706.02(l) and § 2146.
<noinclude>{{MPEP Section|2136|2100|2138}}</noinclude>

Latest revision as of 22:54, May 31, 2020

← MPEP 2136 ↑ MPEP 2100 MPEP 2138 →


2137 35 U.S.C. 102(f)[edit | edit source]

35 U.S.C. 102. Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless -

.          .          .

(f) he did not himself invent the subject matter sought to be patented.

.          .          .


Where it can be shown that an applicant "derived" an invention from another, a rejection under 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 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived.

Such a derived prior art reference 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").

It is the burden of the applicant to provide a satisfactory showing that the applicant is the inventor of the subject matter disclosed in a publication and claimed in the application.

DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE ALLEGED DERIVER[edit | edit source]

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).

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.

PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY[edit | edit source]

The party alleging derivation need not prove 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.

DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION[edit | edit source]

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.

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[edit | edit source]

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.

2137.01 Inventorship[edit | edit source]

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.

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 DECLARATION UNDER 37 CFR 1.63 ARE PRESUMED TO BE THE INVENTORS[edit | edit source]

The party or parties executing an oath or declaration under 37 CFR 1.63 are presumed to be the inventors.

II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION[edit | edit source]

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.” In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984).

With regard to the inventorship of chemical compounds, an inventor must have a conception of the specific compounds being claimed.

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[edit | edit source]

“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).

IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE[edit | edit source]

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.

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.”

  • One following oral instructions is viewed as merely a technician.
  • Inventors need not personally construct and test their invention.
  • A noninventor's work can merely be that of a skilled mechanic carrying out the details of a plan devised by another).
V. REQUIREMENTS FOR JOINT INVENTORSHIP[edit | edit source]

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.

35 U.S.C. 116 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." 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." 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.

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

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 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; 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). 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)[edit | edit source]

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.

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