Pre-AIA 35 U.S.C. 102(f)
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USPTO MPEP › Chapter 2100 - Patentability › MPEP § 2137
Text
[Editor Note: This MPEP section is
not applicable
to applications
subject to examination under the first inventor to file (FITF) provisions of the AIA as
set forth in
35 U.S.C. 100 (note)
. See
MPEP §
2159
et seq. to determine whether an application is subject to
examination under the FITF provisions, and
MPEP §
2150
et seq. for examination of applications subject to those
provisions. See
MPEP § 2157
for rejections based on
improper naming of the inventor in applications subject to the first inventor to file
provisions of the AIA.
“Derivation” or “derived” as used in the
discussion below is in the context of pre-AIA law. “Derivation proceedings” as created
in the AIA are discussed in
MPEP § 2310
et seq.]
Pre-AIA 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.
*****
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. Thus
pre-AIA 35 U.S.C.
102(f)
requires that the correct inventorship of a claimed invention
be named in the patent application (and any subsequently issued patent).
In re
VerHoef,
888 F.3d 1362, 1365, 126 USPQ2d 1561, 1563 (Fed. Cir. 2018);
Pannu v. Iolab Corp.,
155 F.3d 1344, 1349-50, 47 USPQ2d 1657, 1662
(Fed. Cir. 1998). See also
35 U.S.C. 101
, which requires that
whoever invents or discovers is the party who may obtain a patent for the particular
invention or discovery.
The examiner must presume the applicants are the proper
inventor unless there is evidence of record that another made the invention and that the
applicants derived the invention from the true inventor. In the uncommon situation where it
is clear the application does not name the correct inventorship and there has been no
request to correct inventorship under
37 CFR 1.48
, the examiner should reject
the claims under
pre-AIA
35 U.S.C. 102(f)
the proper
inventor unless there is evidence of record that another made the invention and that the
applicants derived the invention from the true inventor. In the uncommon situation where it
is clear the application does not name the correct inventorship and there has been no
request to correct inventorship under
37 CFR 1.48
, the examiner should reject
the claims under
pre-AIA
35 U.S.C. 102(f)
.
In re VerHoef,
888 F.3d 1362,
1368, 126 USPQ2d 1561, 1566 (Fed. Cir. 2018) (an affidavit by applicant made it “clear that
he did not himself solely invent the subject matter sought to be patented” because it
established that another person was a joint inventor of the claimed invention).
Where it can be shown that an inventor or at least one joint inventor
“derived” an invention from another, a rejection under
pre-AIA 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
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.
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 [in an
application subject to
pre-AIA 35 U.S.C. 102
] by two generally recognized methods”: an
affidavit under
37
CFR 1.131
, or an attribution affidavit under
37 CFR 1.132
);
In re Facius,
408 F.2d 1396, 1407, 161 USPQ 294, 302 (CCPA 1969) (if
an inventor or at least one joint inventor “… invented the subject matter upon which the
relevant disclosure in the patent was based, then the patent may not be used as a reference
against him notwithstanding the patent's silence as to the patentee's [inventive entity’s]
source of that subject matter.”). See
MPEP §§ 715.01
et seq
In re Facius,
408 F.2d 1396, 1407, 161 USPQ 294, 302 (CCPA 1969) (if
an inventor or at least one joint inventor “… invented the subject matter upon which the
relevant disclosure in the patent was based, then the patent may not be used as a reference
against him notwithstanding the patent's silence as to the patentee's [inventive entity’s]
source of that subject matter.”). See
MPEP §§ 715.01
et seq.
and
716.10
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
pre-AIA 35 U.S.C. 102(f)
. However, it
is incumbent upon the applicant of 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
an affidavit or declaration under
37 CFR 1.132
that the inventorship of
the application is correct in that the reference discloses subject matter invented by the
inventor or at least one joint inventor rather than derived from the author or inventive
entity notwithstanding the authorship of the article or the inventorship of the patent,
respectively.
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 [inventor or at least one joint
inventor] is the…inventor” of the subject matter disclosed in the article and claimed in
the application)
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 [inventor or at least one joint
inventor] is the…inventor” of the subject matter disclosed in the article and claimed in
the application).
In addition, subject matter qualifying as prior art only under
pre-AIA 35 U.S.C.
102(f)
may also be the basis for an
ex parte
rejection under
pre‑AIA
35 U.S.C. 103
. However,
pre-AIA 35 U.S.C. 103(c)
states that
subsection
(f)
of
pre-AIA 35 U.S.C. 102
will not preclude
patentability where subject matter developed by another person, that would otherwise
qualify under
pre-AIA 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
pre-AIA 35 U.S.C.
103(c)(2) and (c)(3)
, at the time the invention was made. See
MPEP §
2146
.
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)
.”
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)
f 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.”).
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.”
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).
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.
Price v. Symsek,
988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed.
Cir. 1993).
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
torship, 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).
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 filing date of the claimed invention in the application
being examined. However, for a reference having a date later than the effective filing
date of the claimed invention in the application some evidence may exist that the
subject matter of the reference was derived from the inventor or at least one joint
inventor 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 the effective filing date of the
claimed invention that merely lists as literary coauthors individuals other than the
inventor is not the strong evidence needed to rebut a declaration by the inventor that
he is the sole inventor.).
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.