data/2100/s2109.html.txt

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# 2109 Inventorship [R-10.2019]


The requirement that the applicant for a patent in an application filed
 before September 16, 2012 be the inventor(s) (except as otherwise provided in
 **[pre-AIA 37 CFR
 1.41](mpep-9020-appx-r.html#d0e317666)**), and that the inventor or each joint inventor be identified in
 applications filed on or after September 16, 2012, are characteristics of U.S. patent law
 not generally shared by other countries. Consequently, foreign applicants may misunderstand
 U.S. law regarding naming of the actual inventors causing an error in the inventorship of a
 U.S. application that may claim priority to a previous foreign application under
 **[35 U.S.C.
 119](mpep-9015-appx-l.html#d0e302921)**. A request under **[37 CFR 1.48](mpep-9020-appx-r.html#d0e317930)** is required to correct any
 error in the inventorship in the U.S. application as filed. See **[MPEP § 602.01(c)](s602.html#d0e4830ss602)***et seq.* Foreign applicants may need to be reminded of the requirement
 for the same inventor or at least one common joint inventor between a U.S. application and
 a **[35 U.S.C.
 119](mpep-9015-appx-l.html#d0e302921)** priority application. See **[MPEP §
 213.02](s213.html#ch200_d1ff72_1b289_213)**, subsection II. 
 


If a determination is made that the inventive entity named in a U.S.
 application is not correct, such as when a request under **[37 CFR 1.48(a)](mpep-9020-appx-r.html#d0e317930)** is not
 granted or is not entered for technical reasons, but the admission therein regarding the
 error in inventorship is uncontroverted, a rejection should be made on this basis. See
 **[MPEP §
 2157](s2157.html#ch2100_d20034_1bb92_e7)** for rejections under **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)** and **[35 U.S.C. 115](mpep-9015-appx-l.html#d0e302875912)**, and
 **[MPEP §
 2137](s2137.html#d0e206570)** for rejections under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)** (for
 applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**), for failure to set forth the correct
 inventorship.
 

**I.** **NAMING INVENTORSHIP**The inventor, or each individual who is a joint inventor
 of a claimed invention, in an application for patent (other than a provisional
 application) must execute an oath or declaration directed to the application, except as
 provided for in **[37
 CFR 1.64](mpep-9020-appx-r.html#aia_d0e319924)**. See **[MPEP § 602.01](s602.html#ch600_d1ff64_24f27_297)** for detailed
 information pertaining to naming the inventor. See **[MPEP §
 602.01(a)](s602.html#ch600_d1ff64_29e5e_a0)** for the requirements of an inventor’s oath or
 declaration in an application filed on or after September 16, 2012. See
 **[MPEP §
 602.01(b)](s602.html#ch600_d1ffbe_2a437_2a7)** for the requirements of an original oath or
 declaration in an application filed before September 16, 2012.
 


For applications filed before September 16, 2012, **[pre-AIA 37 CFR
 1.41(a)(1)](mpep-9020-appx-r.html#d0e317678)** defines the inventorship of a nonprovisional
 application as that inventorship set forth in the oath or declaration filed to comply
 with the requirements of **[pre-AIA 37 CFR 1.63](mpep-9020-appx-r.html#d0e319759)**, except as
 otherwise provided. Thus the party or parties executing an oath or declaration under
 **[pre-AIA 37 CFR
 1.63](mpep-9020-appx-r.html#d0e319759)** are presumed to be the inventors. *Driscoll v.
 Cebalo,* 5 USPQ2d 1477, 1481 (Bd. Pat. Inter. 1982); *In re
 DeBaun,* 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (The inventor of
 an element, *per se,* and the inventor of that element as used in a
 combination may differ. "The existence of combination claims does not evidence
 inventorship by the patentee of the individual elements or subcombinations thereof if
 the latter are not separately claimed apart from the combination." (quoting *In
 re Facius,* 408 F.2d 1396, 1406, 161 USPQ 294, 301 (CCPA 1969) (emphasis in
 original)); *Brader v. Schaeffer,* 193 USPQ 627, 631 (Bd. Pat. Inter.
 1976) (in regard to an inventorship correction: "[a]s between inventors their word is
 normally taken as to who are the actual inventors" when there is no disagreement). 
 

**II.** **AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION**The definition for inventorship can be simply stated: "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,* is
 irrelevant [except for simultaneous conception and reduction to practice, *Fiers
 v. Revel,* 984 F.2d 1164, 1168, 25 USPQ2d 1601, 1604-05 (Fed. Cir. 1993)].
 One must contribute to the conception to be an inventor." *In re
 Hardee,* 223 USPQ 1122, 1123 (Comm’r Pat. 1984). ). A person who shares in
 the conception of a claimed invention is a joint inventor of that invention. *In
 re VerHoef,* 888 F.3d 1362, 1366-67, 126 F.2d 1561, 1564-65 (Fed. Cir.
 2018). See also *Board of Education ex rel. Board of Trustees of Florida State
 Univ. v. American Bioscience Inc.,* 333 F.3d 1330, 1340, 67 USPQ2d 1252,
 1259 (Fed. Cir. 2003) ("Invention requires conception." With regard to the inventorship
 of chemical compounds, an inventor must have a conception of the specific compounds
 being claimed. "[G]eneral knowledge regarding the anticipated biological properties of
 groups of complex chemical compounds is insufficient to confer inventorship status with
 respect to specifically claimed compounds."); *Ex parte Smernoff,* 215
 USPQ 545, 547 (Bd. App. 1982) ("one who suggests an idea of a result to be accomplished,
 rather than the means of accomplishing it, is not an coinventor"). See
 **[MPEP
 § 2138.04](s2138.html#d0e207607)** - **[§ 2138.05](s2138.html#d0e207753)** for a discussion of what
 evidence is required to establish conception or reduction to practice. 
 

**III.** **THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE**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. *Fritsch v. Lin,* 21 USPQ2d 1737, 1739
 (Bd. Pat. App. & Inter. 1991) (The inventor "took no part in developing the
 procedures…for expressing the EPO gene in mammalian host cells and isolating the
 resulting EPO product." However, "it is not essential for the inventor to be personally
 involved in carrying out process steps…where implementation of those steps does not
 require the exercise of inventive skill."); *In re DeBaun,* 687 F.2d
 459, 463, 214 USPQ 933, 936 (CCPA 1982) ("there 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").
 


See also *Mattor**v.**Coolegem,* 530 F.2d 1391, 1395, 189 USPQ 201, 204 (CCPA 1976) (one
 following oral instructions is viewed as merely a technician); *Tucker v.
 Naito,* 188 USPQ 260, 263 (Bd. Pat. Inter. 1975) (inventors need not
 "personally construct and test their invention"); *Davis**v.**Carrier,* 81 F.2d 250, 252, 28 USPQ 227, 229 (CCPA 1936)
 (noninventor’s work was merely that of a skilled mechanic carrying out the details of a
 plan devised by another). 
 

**IV.** **JOINT INVENTORSHIP**Pursuant to **[35 U.S.C. 116](mpep-9015-appx-l.html#d0e302886912)**, "[w]hen an invention
 is made by two or more persons jointly, they shall apply for patent jointly and each
 make the required oath, except as otherwise provided in this title. Inventors may apply
 for a patent jointly even though (1) they did not physically work together or at the
 same time, (2) each did not make the same type or amount of contribution, or (3) each
 did not make a contribution to the subject matter of every claim of the patent." 
 


The inventive entity for a particular application is
 based on some contribution to at least one of the claims made by each of the named joint
 inventors. See **[MPEP § 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)** for a detailed
 discussion of the requirements for joint inventorship. See **[MPEP §
 602.09](s602.html#ch600_d1ff6a_1ba4a_ff)** regarding inquiries about the inventorship of each
 claimed invention and regarding correction of inventorship when an application is
 amended such that one (or more) of the named joint inventors is no longer a joint
 inventor of the subject matter of any claim remaining in the application. 
 

**V.** **INVENTORSHIP "BY ANOTHER"**Inventorship is generally "by another" where there are different
 inventive entities and there is at least one inventor that is not in common. For
 information relating to inventorship by "another" involving different inventive entities
 with at least one inventor in common, see **[MPEP §
 2153.01(a)](s2153.html#ch2100_d20033_24e66_2ac)** for applications subject to examination under the
 first inventor to file (FITF) provisions of the AIA, and **[MPEP § 2136.04](s2136.html#d0e206254)** for
 applications subject to examination under pre-AIA law.
 

**VI.** **EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT
 APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120**An application claiming the benefit of a prior filed copending national
 or international application under **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** must name as an
 inventor at least one inventor named in the prior filed application. The prior filed
 application must also disclose the named inventor’s invention claimed in at least one
 claim of the later filed application in the manner provided by **[35 U.S.C.
 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** for applications filed on or after September 16, 2012, or
 **[35 U.S.C.
 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph for applications filed prior to September 16,
 2012. This practice contrasts with the practice in effect prior to November 8, 1984 (the
 date of enactment of Public Law 98-622) where the inventorship entity in each of the
 applications was required to be the same for benefit under **[35 U.S.C.
 120](mpep-9015-appx-l.html#d0e303023313)**.
 


So long as the applications have at least one inventor in common and the
 other requirements are met, the Office will permit a claim for **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**
 benefit without any additional submissions or notifications from applicants regarding
 inventorship differences.
 


In addition to the normal examination conducted by the examiner, the
 examiner must examine the earlier filed application to determine if the earlier and
 later applications have at least one inventor in common and that the other
 **[35 U.S.C.
 120](mpep-9015-appx-l.html#d0e303023313)** and **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320662)** requirements are met.
 See **[MPEP §
 211](s211.html#ch200_d1ff71_1bd25_18b)***et seq.* The claim for **[35 U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)** benefit will be
 permitted without examination of the earlier application for disclosure and support of
 at least one claim of the later filed application under **[35 U.S.C.
 112](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** unless it becomes necessary to do so, for example, because of
 an intervening reference.
 


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