Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (5)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“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.” MPEP 2109
The MPEP further clarifies:
“[T]here 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.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
To learn more:
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
To learn more:
Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
To learn more:
No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
To learn more:
Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
To learn more:
MPEP 2109 – Inventorship (1)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“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.” MPEP 2109
The MPEP further clarifies:
“[T]here 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.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
To learn more:
MPEP 2136.03 – Critical Reference Date (1)
No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
To learn more:
MPEP 2138.01 – Interference Practice (1)
Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
To learn more:
MPEP 2138.04 – "Conception" (1)
Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
To learn more:
MPEP 2138.05 – "Reduction To Practice" (1)
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
To learn more:
Patent Law (5)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“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.” MPEP 2109
The MPEP further clarifies:
“[T]here 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.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
To learn more:
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
To learn more:
Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
To learn more:
No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
To learn more:
Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
To learn more:
Patent Procedure (5)
According to the MPEP, reduction to practice is generally not required to be considered an inventor. The focus is on conception of the invention. The MPEP states:
“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.” MPEP 2109
The MPEP further clarifies:
“[T]here 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.” In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982)
This means that an individual who conceives the invention but doesn’t physically create or test it can still be considered an inventor, as long as others carry out those steps under their direction.
To learn more:
Sufficient evidence of reduction to practice is crucial in patent law, especially when establishing priority or defending against challenges. The MPEP 2138.05 provides guidance on what constitutes adequate evidence:
“In order to establish an actual reduction to practice, the inventor must prove that: (1) he or she constructed an embodiment or performed a process that met all the limitations of the claim, and (2) he or she determined that the invention would work for its intended purpose.”
Sufficient evidence typically includes:
- Detailed laboratory notebooks or records documenting the invention’s development and testing
- Witness testimony corroborating the inventor’s activities
- Physical prototypes or samples of the invention
- Test results demonstrating the invention’s functionality
- Dated and signed documents describing the invention
It’s important to note that the evidence must be contemporaneous with the alleged reduction to practice and should clearly show that the invention works as intended. Mere speculation or theoretical calculations are generally insufficient to prove reduction to practice.
To learn more:
Conception and reduction to practice are crucial elements in determining priority of invention in interference proceedings. The MPEP provides several examples illustrating their importance:
- Conception (C) refers to the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind.
- Reduction to practice can be either actual (Ra) or constructive (Rc). Actual reduction to practice involves building and testing the invention, while constructive reduction to practice typically refers to filing a patent application.
The MPEP states:
“A is awarded priority in an interference, or antedates B as a reference in the context of a declaration or affidavit filed under 37 CFR 1.131, because A conceived the invention before B and constructively reduced the invention to practice before B reduced the invention to practice.”
This example demonstrates how earlier conception combined with earlier reduction to practice can secure priority of invention.
To learn more:
No, the date of conception or reduction to practice is not relevant for determining the pre-AIA 35 U.S.C. 102(e) reference date. The MPEP clearly states:
“When the cases are not in interference, the effective date of the reference as prior art is its filing date in the United States (which will include certain international filing dates), as stated in pre-AIA 35 U.S.C. 102(e). The date that the prior art subject matter was conceived or reduced to practice is of no importance when pre-AIA 35 U.S.C. 102(g) is not at issue.”
Key points to remember:
- The pre-AIA 35 U.S.C. 102(e) reference date is based on the filing date, not the date of conception or reduction to practice.
- This applies to U.S. patents and certain international applications with a U.S. filing date.
- The date of conception or reduction to practice only becomes relevant in interference proceedings or when pre-AIA 35 U.S.C. 102(g) is at issue.
This principle was affirmed in the case of Sun Studs, Inc. v. ATA Equip. Leasing, Inc., where the court held that when pre-AIA 35 U.S.C. 102(e) applies but not pre-AIA 35 U.S.C. 102(g), the filing date of the prior art patent is the earliest date that can be used to reject or invalidate claims.
To learn more:
Conception and reduction to practice are two distinct steps in the inventive process. According to MPEP 2138.04, conception is the mental part of the inventive act, while reduction to practice involves actually creating or performing the invention.
The MPEP states:
“Conception has been defined as ‘the complete performance of the mental part of the inventive act’ and it is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice….’”
Reduction to practice, on the other hand, can be either actual (physically creating the invention) or constructive (filing a patent application with a sufficient description). In most cases, conception occurs before reduction to practice. However, the MPEP notes that in some unpredictable fields, such as chemistry and biology, conception and reduction to practice may occur simultaneously:
“On rare occasions conception and reduction to practice occur simultaneously in unpredictable technologies.”
Understanding this distinction is crucial for determining inventorship and priority dates in patent law.
To learn more: