Who can be named as an inventor on a patent application?

According to the Manual of Patent Examining Procedure (MPEP), an inventor must be a natural person. The MPEP states: “35 U.S.C. 100(f) defines the term ‘inventor’ as the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.” This means that only individuals, not companies or…

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What constitutes conception of an invention?

Conception is a critical element in determining inventorship. The MPEP provides guidance on what constitutes conception: “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,…

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What is the primary purpose of a derivation proceeding?

The primary purpose of a derivation proceeding is to determine the true inventor of a claimed invention when there is a dispute between two patent applications. This is outlined in MPEP 2310.01, which cites 35 U.S.C. 135(b): “In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an…

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What is the role of the Patent Trial and Appeal Board in derivation proceedings?

The Patent Trial and Appeal Board (PTAB) plays a crucial role in derivation proceedings. According to MPEP 2310.01, which cites 35 U.S.C. 135(b): “In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named…

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What is the “one-way rule” for determining inventorship differences?

The “one-way rule” is a key concept in determining inventorship differences for prior art purposes. According to MPEP 2136.04: “The ‘one-way rule’ is that the inventorship of an application-publication having at least one inventor in common with the patent is different than the inventorship of the patent if the application-publication names at least one inventor…

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What types of information from litigation are considered material to patent examination?

According to MPEP 2001.06(c), several types of information from litigation are considered material to patent examination: Evidence of possible prior public use or sales Questions of inventorship Prior art references Allegations of fraud, inequitable conduct, or violation of duty of disclosure Assertions made during litigation that contradict statements made to the examiner Defenses raised against…

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