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…
Read MoreWhat 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,…
Read MoreHow does the suppression and concealment doctrine affect inventorship in patent law?
The suppression and concealment doctrine can significantly impact inventorship in patent law. According to the MPEP: “The result of applying the suppression and concealment doctrine is that the inventor who did not conceal (but was the de facto last inventor) is treated legally as the first to invent, while the de facto first inventor who…
Read MoreIs reduction to practice necessary to be considered an inventor?
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…
Read MoreHow does reduction to practice affect the determination of inventorship?
Reduction to practice plays a crucial role in determining inventorship, particularly in cases of competing inventors. The MPEP 2138.05 provides guidance on this matter: “The inventor of the subject matter of a patent is presumed to be the individual or individuals named as inventors in the patent. In order to rebut this presumption, clear and…
Read MoreWhat 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…
Read MoreWhat is pre-AIA 35 U.S.C. 102(f) and when does it apply?
Pre-AIA 35 U.S.C. 102(f) is a provision that bars the issuance of a patent where an applicant did not invent the subject matter being claimed. It applies to patent applications that are not subject to the first inventor to file (FITF) provisions of the America Invents Act (AIA). According to the MPEP, Pre-AIA 35 U.S.C.…
Read MoreWhat 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…
Read MoreWhat 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…
Read MoreWhat 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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