The requirement that the applicant for a patent in an application filed before September 16, 2012 be the inventor(s) (except as otherwise provided in pre-AIA 37 CFR 1.41), and that the inventor or each joint inventor be identified in applications filed on or after September 16, 2012, are characteristics 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 is required to correct any error in the inventorship in the U.S. application as filed. See MPEP § 602.01(c)et seq. Foreign applicants may need to be reminded of the requirement for the same inventor or at least one common joint inventor between a U.S. application and a 35 U.S.C. 119 priority application. See MPEP § 213.02, subsection II.
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 should be made on this basis. See MPEP § 2157 for rejections under 35 U.S.C. 101 and 35 U.S.C. 115, and MPEP § 2137 for rejections under pre-AIA 35 U.S.C. 102(f) (for applications subject to pre-AIA 35 U.S.C. 102), for failure to set forth the correct inventorship.
I. NAMING INVENTORSHIP
The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent (other than a provisional application) must execute an oath or declaration directed to the application, except as provided for in 37 CFR 1.64. See MPEP § 602.01 for detailed information pertaining to naming the inventor. See MPEP § 602.01(a) for the requirements of an inventor’s oath or declaration in an application filed on or after September 16, 2012. See MPEP § 602.01(b) for the requirements of an original oath or declaration in an application filed before September 16, 2012.
For applications filed before September 16, 2012, pre-AIA 37 CFR 1.41(a)(1) defines the inventorship of a nonprovisional application as that inventorship set forth in the oath or declaration filed to comply with the requirements of pre-AIA 37 CFR 1.63, except as otherwise provided. Thus the party or parties executing an oath or declaration under pre-AIA 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). ). A person who shares in the conception of a claimed invention is a joint inventor of that invention. In re VerHoef, 888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir. 2018). 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. 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 Mattorv.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”); Davisv.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).
IV. JOINT INVENTORSHIP
Pursuant to 35 U.S.C. 116, “[w]hen an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. 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.”
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 joint inventors. See MPEP § 2109.01 for a detailed discussion of the requirements for joint inventorship. See MPEP § 602.09 regarding inquiries about the inventorship of each claimed invention and regarding correction of inventorship when an application is amended such that one (or more) of the named joint inventors is no longer a joint inventor of the subject matter of any claim remaining in the application.
V. INVENTORSHIP “BY ANOTHER”
Inventorship is generally “by another” where there are different inventive entities and there is at least one inventor that is not in common. For information relating to inventorship by “another” involving different inventive entities with at least one inventor in common, see MPEP § 2153.01(a) for applications subject to examination under the first inventor to file (FITF) provisions of the AIA, and MPEP § 2136.04 for applications subject to examination under pre-AIA law.
VI. EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120
An application claiming the benefit of a prior filed copending national or international application under 35 U.S.C. 120 must name as an inventor at least one inventor named in the prior filed application. The prior filed application must also disclose the named inventor’s invention claimed in at least one claim of the later filed application in the manner provided by 35 U.S.C. 112(a) for applications filed on or after September 16, 2012, or 35 U.S.C. 112, first paragraph for applications filed prior to September 16, 2012. This practice contrasts with the practice in effect prior to November 8, 1984 (the date of enactment of Public Law 98-622) where the inventorship entity in each of the applications was required to be the same for benefit under 35 U.S.C. 120.
So long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences.
In addition to the normal examination conducted by the examiner, the examiner must examine the earlier filed application to determine if the earlier and later applications have at least one inventor in common and that the other 35 U.S.C. 120 and 37 CFR 1.78 requirements are met. See MPEP § 211et seq. The claim for 35 U.S.C. 120 benefit will be permitted without examination of the earlier application for disclosure and support of at least one claim of the later filed application under 35 U.S.C. 112 unless it becomes necessary to do so, for example, because of an intervening reference.