MPEP § 2154.01(c) — Requirement Of “Names Another Inventor” (Annotated Rules)
§2154.01(c) Requirement Of “Names Another Inventor”
This page consolidates and annotates all enforceable requirements under MPEP § 2154.01(c), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Requirement Of “Names Another Inventor”
This section addresses Requirement Of “Names Another Inventor”. Primary authority: 35 U.S.C. 100, 35 U.S.C. 102, and 35 U.S.C. 102(a)(2). Contains: 1 requirement and 2 other statements.
Key Rules
AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154)
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.
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.
Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159)
[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.]
Citations
| Primary topic | Citation |
|---|---|
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 100 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | 35 U.S.C. § 102 |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) | 35 U.S.C. § 102(a)(2) |
| AIA 102(a)(2) – Earlier Filed Applications (MPEP 2154) | 35 U.S.C. § 102(b)(2) |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2131 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2138 |
| Prior Art Under AIA 35 U.S.C. 102 (MPEP 2150-2159) | MPEP § 2159 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2154.01(c) — Requirement Of “Names Another Inventor”
Source: USPTO2154.01(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.