2137 Pre-AIA 35 U.S.C. 102(f) [R-01.2024]

[Editor Note: This MPEP section is not 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 § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2157 for rejections based on improper naming of the inventor in applications subject to the first inventor to file provisions of the AIA.

“Derivation” or “derived” as used in the discussion below is in the context of pre-AIA law. “Derivation proceedings” as created in the AIA are discussed in MPEP § 2310 et seq.]

Pre-AIA 35 U.S.C. 102(f) bars the issuance of a patent where an applicant did not invent the subject matter being claimed and sought to be patented. Thus pre-AIA 35 U.S.C. 102(f) requires that the correct inventorship of a claimed invention be named in the patent application (and any subsequently issued patent). In re VerHoef, 888 F.3d 1362, 1365, 126 USPQ2d 1561, 1563 (Fed. Cir. 2018); Pannu v. Iolab Corp., 155 F.3d 1344, 1349-50, 47 USPQ2d 1657, 1662 (Fed. Cir. 1998). See also 35 U.S.C. 101, which requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery.

The examiner must presume the applicants are the proper inventor unless there is evidence of record that another made the invention and that the applicants derived the invention from the true inventor. In the uncommon situation where it is clear the application does not name the correct inventorship and there has been no request to correct inventorship under 37 CFR 1.48, the examiner should reject the claims under pre-AIA 35 U.S.C. 102(f). In re VerHoef, 888 F.3d 1362, 1368, 126 USPQ2d 1561, 1566 (Fed. Cir. 2018) (an affidavit by applicant made it “clear that he did not himself solely invent the subject matter sought to be patented” because it established that another person was a joint inventor of the claimed invention).

Where it can be shown that an inventor or at least one joint inventor “derived” an invention from another, a rejection under pre-AIA 35 U.S.C. 102(f) is proper. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all, determinations under section 102(f) involve the question of whether one party derived an invention from another”).

While derivation will bar the issuance of a patent to the deriver, a disclosure by the deriver, absent a bar under pre-AIA 35 U.S.C. 102(b), will not bar the issuance of a patent to the party from which the subject matter was derived. In re Costello, 717 F.2d 1346, 1349, 219 USPQ 389, 390-91 (Fed. Cir. 1983) (“[a] prior art reference that is not a statutory bar may be overcome [in an application subject to pre-AIA 35 U.S.C. 102] by two generally recognized methods”: an affidavit under 37 CFR 1.131, or an attribution affidavit under 37 CFR 1.132); In re Facius, 408 F.2d 1396, 1407, 161 USPQ 294, 302 (CCPA 1969) (if an inventor or at least one joint inventor “… invented the subject matter upon which the relevant disclosure in the patent was based, then the patent may not be used as a reference against him notwithstanding the patent's silence as to the patentee's [inventive entity’s] source of that subject matter.”). See MPEP §§ 715.01et seq. and 716.10

Where there is a published article identifying the authorship (MPEP § 715.01(c)) or a patent identifying the inventorship (MPEP § 715.01(a)) that discloses subject matter being claimed in an application undergoing examination, the designation of authorship or inventorship does not raise a presumption of inventorship with respect to the subject matter disclosed in the article or with respect to the subject matter disclosed but not claimed in the patent so as to justify a rejection under pre-AIA 35 U.S.C. 102(f). However, it is incumbent upon the applicant of the application, in reply to an inquiry regarding the appropriate inventorship under pre-AIA subsection (f), or to rebut a rejection under pre-AIA 35 U.S.C. 102(a) or (e), to provide a satisfactory showing by way of an affidavit or declaration under 37 CFR 1.132 that the inventorship of the application is correct in that the reference discloses subject matter invented by the inventor or at least one joint inventor rather than derived from the author or inventive entity notwithstanding the authorship of the article or the inventorship of the patent, respectively. In re Katz, 687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is appropriate to clarify any ambiguity created by an article regarding inventorship, and it is then incumbent upon the applicant to provide “a satisfactory showing that would lead to a reasonable conclusion that [inventor or at least one joint inventor] is the…inventor” of the subject matter disclosed in the article and claimed in the application).

In addition, subject matter qualifying as prior art only under pre-AIA 35 U.S.C. 102(f) may also be the basis for an ex parte rejection under pre‑AIA 35 U.S.C. 103 . However, pre-AIA 35 U.S.C. 103(c) states that subsection (f) of pre-AIA 35 U.S.C. 102 will not preclude patentability where subject matter developed by another person, that would otherwise qualify under pre-AIA 35 U.S.C. 102(f), and the claimed invention of an application under examination were owned by the same person, subject to an obligation of assignment to the same person, or involved in a joint research agreement, which meets the requirements of pre-AIA 35 U.S.C. 103(c)(2) and (c)(3), at the time the invention was made. See MPEP § 2146.

I. DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE ALLEGED DERIVER

“The mere fact that a claim recites the use of various components, each of which can be argumentatively assumed to be old, does not provide a proper basis for a rejection under pre-AIA 35 U.S.C. 102(f).” Ex parte Billottet, 192 USPQ 413, 415 (Bd. App. 1976). Derivation requires complete conception by another and communication of that conception by any means to the party charged with derivation prior to any date on which it can be shown that the one charged with derivation possessed knowledge of the invention. Kilbey v. Thiele, 199 USPQ 290, 294 (Bd. Pat. Inter. 1978).

See also Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993); Hedgewick v. Akers, 497 F.2d 905, 908, 182 USPQ 167, 169 (CCPA 1974). “Communication of a complete conception must be sufficient to enable one of ordinary skill in the art to construct and successfully operate the invention.” Hedgewick, 497 F.2d at 908, 182 USPQ at 169. See also Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1577, 42 USPQ2d 1378, 1383 (Fed. Cir. 1997) (Issue in proving derivation is “whether the communication enabled one of ordinary skill in the art to make the patented invention.”).

II. PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY

The party alleging derivation “need not prove an actual reduction to practice in order to show derivation.” Scott v. Brandenburger, 216 USPQ 326, 327 (Bd. App. 1982). Furthermore, the application of subsection (f) is not limited to public knowledge derived from another, and “the site of derivation need not be in this country to bar a deriver from patenting the subject matter.” Ex parte Andresen, 212 USPQ 100, 102 (Bd. App. 1981).

III. DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION

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. Price v. Symsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir. 1993).

IV. PRE-AIA 35 U.S.C. 102(f) MAY APPLY WHERE PRE-AIA 35 U.S.C. 102(a) AND PRE-AIA 35 U.S.C. 102(e) ARE NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION

Pre-AIA 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where pre-AIA subsections (a) and (e) are not available for references having an effective date subsequent to the effective filing date of the claimed invention in the application being examined. However, for a reference having a date later than the effective filing date of the claimed invention in the application some evidence may exist that the subject matter of the reference was derived from the inventor or at least one joint inventor in view of the relative dates. Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (The relative dates of the events are important in determining derivation; a publication dated more than a year after the effective filing date of the claimed invention that merely lists as literary coauthors individuals other than the inventor is not the strong evidence needed to rebut a declaration by the inventor that he is the sole inventor.).

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