How does Pre-AIA 35 U.S.C. 102(f) affect joint inventorship situations?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Pre-AIA 35 U.S.C. 102(f) has significant implications for joint inventorship situations. The MPEP states:

“If the invention was derived from another, 35 U.S.C. 102(f) precludes issuance of a patent. […] Where there are joint inventors, each inventor need not contribute to every claim of the patent; a contribution to one claim is enough.“

This means that in joint inventorship cases:

• Each inventor must have contributed to the conception of at least one claim in the patent application.
• Not every inventor needs to have contributed to every claim.
• If an individual is named as an inventor but did not actually contribute to the conception of any claim, this could lead to a rejection under 35 U.S.C. 102(f).

It’s crucial for patent applicants to accurately determine and represent joint inventorship to avoid potential issues under Pre-AIA 35 U.S.C. 102(f).