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2137.01 Inventorship [R-3] - 2100 Patentability
2137.01 Inventorship [R-3]
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.
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