data/2100/s2137.html.txt

[
# 2137 Pre-AIA 35 U.S.C. 102(f) [R-10.2019]


*[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)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
 examination under the FITF provisions, and **[MPEP §
 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
 provisions. See **[MPEP § 2157](s2157.html#ch2100_d20034_1bb92_e7)** 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](s2310.html#ch2300_d2988c_24ad0_c7)** et seq.]*



#### *Pre-AIA 35 U.S.C. 102   
 Conditions for patentability; novelty and loss of right to patent.*


A person shall be entitled to a patent unless -


\*\*\*\*\*


* (f) he did not himself invent the subject matter sought to be
 patented.


\*\*\*\*\*



**[Pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)** requires that the correct inventor(s) 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](mpep-9015-appx-l.html#d0e302376)**, 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
 inventors unless there is evidence of record that another made the invention and that
 applicant 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](mpep-9020-appx-r.html#d0e317930)**, the examiner should reject
 the claims under **[pre-AIA
 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**. *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)](mpep-9015-appx-l.html#d0e302383)** is proper.
 *Ex parte Kusko,* 215 USPQ 972, 974 (Bd. App. 1981) ("most, if not all,
 determinations under **[section 102(f)](mpep-9015-appx-l.html#d0e302420)** 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)](mpep-9015-appx-l.html#d0e302383)**, 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](mpep-9015-appx-l.html#d0e302383)**] by two generally recognized methods": an
 affidavit under **[37
 CFR 1.131](mpep-9020-appx-r.html#aia_d0e323504)**, or an attribution affidavit under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)**);
 *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 §§ 715.01](s715.html#d0e90633)***et seq.* and **[716.10](s716.html#d0e93797)**


Where there is a published article identifying the authorship
 (**[MPEP §
 715.01(c)](s715.html#d0e90779)**) or a patent identifying the inventorship
 (**[MPEP §
 715.01(a)](s715.html#d0e90674)**) 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)](mpep-9015-appx-l.html#d0e302383)**. However, it
 is incumbent upon the applicant of the application, in reply to an inquiry regarding the
 appropriate inventorship under **[pre-AIA subsection (f)](mpep-9015-appx-l.html#d0e302420)**, or to rebut a
 rejection under **[pre-AIA
 35 U.S.C. 102(a) or (e)](mpep-9015-appx-l.html#d0e302383)**, to provide a satisfactory showing by way of
 affidavit under **[37 CFR
 1.132](mpep-9020-appx-r.html#d0e323552)** 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)](mpep-9015-appx-l.html#d0e302383)** may also be the basis for an *ex parte*
 rejection under **[pre‑AIA
 35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** . However, **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** states that
 subsection (f) of **[pre-AIA
 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** will not preclude patentability where subject matter
 developed by another person, that would otherwise qualify under **[pre-AIA 35 U.S.C.
 102(f)](mpep-9015-appx-l.html#d0e302383)**, 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)](mpep-9015-appx-l.html#d0e302450)**, at the time the invention was made. See
 **[MPEP §
 2146](s2146.html#d0e213206)**.
 

**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)](mpep-9015-appx-l.html#d0e302383)**." *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)](mpep-9015-appx-l.html#d0e302420)** 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)](mpep-9015-appx-l.html#d0e302383)** 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)](mpep-9015-appx-l.html#d0e302383)** are not available for references having an effective date
 subsequent to the effective filing date of the application being examined. However, for
 a reference having a date later than the effective filing date of 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
 applicant’s filing date 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.).
 



# 2137.01 [Reserved]


*[Editor Note: Information pertaining to
 inventorship has been moved to **[MPEP § 2109](s2109.html#ch2100_d2c183_22374_28b)**, and information
 specific to joint inventorship has been moved to **[MPEP §
 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)**.]*





# 2137.02 [Reserved]


*[Editor Note: Information pertaining to
 the applicability of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** to
 obviousness rejections relying on **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** subject
 matter has been moved to **[MPEP § 2137](s2137.html#d0e206570)**. Information regarding
 inventorship "by another" has been moved to **[MPEP §
 2109](s2109.html#ch2100_d2c183_22374_28b)**, subsection V.]*



[[top]](#top)


, 
# 2137.01 [Reserved]


*[Editor Note: Information pertaining to
 inventorship has been moved to **[MPEP § 2109](s2109.html#ch2100_d2c183_22374_28b)**, and information
 specific to joint inventorship has been moved to **[MPEP §
 2109.01](s2109.01.html#ch2100_d2c1f8_278a7_1e6)**.]*



, 
# 2137.02 [Reserved]


*[Editor Note: Information pertaining to
 the applicability of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302521)** to
 obviousness rejections relying on **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302420)** subject
 matter has been moved to **[MPEP § 2137](s2137.html#d0e206570)**. Information regarding
 inventorship "by another" has been moved to **[MPEP §
 2109](s2109.html#ch2100_d2c183_22374_28b)**, subsection V.]*


]