MPEP 2137

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← 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.

← MPEP 2136 ↑ MPEP 2100 MPEP 2138 →