2154.01(c) Requirement Of “Names Another Inventor” [R-11.2013]

2154.01(c) Requirement Of “Names Another Inventor” [R-11.2013]

[Editor Note: This MPEP section is only 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 § 2131–MPEP § 2138 for examination of applications subject to pre-AIA 35 U.S.C. 102.]

To qualify as prior art under AIA 35 U.S.C. 102(a)(2), the prior art U.S. patent, U.S. patent application publication, or WIPO published application (“U.S. patent document”) must “name[ ] another inventor.” This means that if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the “names another inventor” requirement of AIA 35 U.S.C. 102(a)(2). Thus, in the case of joint inventors, only one joint inventor needs to be different for the inventive entities to be different. Even if there are one or more joint inventors in common in a U.S. patent document and the later-filed application under examination or patent under reexamination, the U.S. patent document qualifies as prior art under AIA 35 U.S.C. 102(a)(2) unless an exception in AIA 35 U.S.C. 102(b)(2) is applicable.