What are the four purposes of 35 U.S.C. 101?
According to MPEP 2107.01, 35 U.S.C. 101 has been interpreted as imposing four purposes: Limiting an inventor to ONE patent for a claimed invention Requiring proper inventorship Defining which categories of inventions are eligible for patent protection Ensuring that patents are granted only on inventions that are “useful” The MPEP states: “35 U.S.C. 101 has…
Read MoreWhat evidence is required in a 37 CFR 1.130(a) declaration?
A 37 CFR 1.130(a) declaration requires evidence to establish that the disclosure was made by the inventor or joint inventor, or that the subject matter was obtained directly or indirectly from the inventor or joint inventor. The evidence may include: Inventor’s affidavit or declaration stating the facts Corroborating documents (e.g., emails, lab notebooks) Evidence of…
Read MoreWhat is the difference between derivation and priority of invention?
While both derivation and priority of invention relate to inventorship, they focus on different aspects. The MPEP explains this distinction clearly: Although derivation and priority of invention both focus on inventorship, derivation addresses originality (i.e., who invented the subject matter), whereas priority focuses on which party first invented the subject matter. In other words: Derivation…
Read MoreHow can inventorship errors be corrected in patent applications?
For applications filed on or after September 16, 2012, inventorship errors can be corrected without disclosing the circumstances of the error. This is based on 35 U.S.C. 116(c), which states: “Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in…
Read MoreWhat are the requirements for naming inventors in a patent application under the AIA?
Under the America Invents Act (AIA), the naming of the actual inventor or joint inventors of the claimed subject matter is still required. As stated in MPEP 2157: “The patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. See 35 U.S.C. 115(a) (‘[a]n application for patent…
Read MoreHow does the presence of additional authors affect an inventor’s declaration of attribution?
When a prior art disclosure includes additional authors besides the inventor or joint inventor named in a patent application, it can complicate the process of attributing the disclosure to the inventor. However, the MPEP provides guidance on handling such situations: “Where the authorship of the prior art disclosure includes the inventor or a joint inventor…
Read MoreHow do Supervisory Patent Examiners handle petitions to correct inventorship in patents?
Supervisory Patent Examiners are responsible for handling petitions to correct inventorship in patents that are not involved in an interference. The MPEP specifies: “Petitions under 37 CFR 1.324 to correct errors in joining inventors in a patent that is not involved in an interference, MPEP § 1481.02.” This authority allows Supervisory Patent Examiners to address…
Read MoreWhat issues can trigger a Printer Rush in patent applications?
Several issues can trigger a Printer Rush in patent applications after they have been allowed. According to MPEP 1309.02: “Issues which may prevent publication until they are resolved include but are not limited to: amendments under 37 CFR 1.312, a Request for Correction of Inventorship under 37 CFR 1.48 and Information Disclosure Statements which have…
Read MoreHow is inventorship determined in a national stage application?
The determination of inventorship in a national stage application depends on the international filing date: For applications with an international filing date on or after September 16, 2012: According to 37 CFR 1.41(e), the inventorship is: The inventor or joint inventors set forth in an application data sheet filed with the initial submission under 35…
Read MoreWhat are the requirements for the inventor’s oath or declaration in a U.S. national stage application?
The requirements for the inventor’s oath or declaration in a U.S. national stage application depend on the international filing date: For applications with an international filing date on or after September 16, 2012: As per 37 CFR 1.497: The oath or declaration must comply with the requirements of 37 CFR 1.63 It can be postponed…
Read More