May 21, 2019

May 21, 2019

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May 20, 2019

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Failure To Name Joint Inventors May Bar Patentability

Following a rejection by the United States Patent and Trademark Office (“USPTO”) under section 102(f) for a rehabilitative dog harness, the Federal Circuit recently affirmed the rejection because the applicant “did not himself solely invent the subject matter sought to be patented.”  In re VerHoef, No. 2017-1976 (Fed. Cir. May 3, 2018).

Jeff VerHoef built a prototype harness to remediate walking difficulties that his dog developed post-surgery.  VerHoef recognized that the harness would work better if it were connected to the dog’s toes, and discussed the matter with his veterinarian, Dr. Alycia Lamb.  During their discussion, Dr. Lamb suggested that VerHoef should consider using a figure eight strap that fit around the dog’s toes and wrapped around the lower part of the leg.  VerHoef implemented the figure eight idea, and, after further adjustments, had a working device that reduced the dog’s walking difficulties.  VerHoef filed a patent application naming both him and Dr. Lamb as co-inventors, with a single claim that included Dr. Lamb’s figure eight strap suggestion.  After a falling out, VerHoef’s attorney abandoned the joint application, and each inventor then filed their own separate applications reciting the same independent claim contained in the abandoned joint application.

After finding the parallel Lamb application in his prior art search, the examiner rejected the claims in VerHoef’s new patent application under section 102(f), finding that VerHoef did not solely invent the claimed subject matter in light of the parallel Lamb application.  The Patent Trial and Appeal Board (“PTAB”) affirmed the examiner’s rejection, and VerHoef appealed.

The Federal Circuit began its analysis by observing that section 102(f) mandates that a patent name the correct inventors of a claimed invention, and that failure to do so renders the patent invalid.  Recognizing that joint inventorship is one of the “muddiest concepts” in patent law, the Federal Circuit explained that consideration of the precise limits of what constitutes sufficient contribution was unnecessary for resolving this appeal because VerHoef conceded that the figure eight strap design that Dr. Lamb conceived was an “essential feature” of the claimed invention.

Notwithstanding his concession, VerHoef attempted to argue that he nevertheless was the sole inventor because he maintained “intellectual domination and control of the work” at all times, and that Dr. Lamb’s idea was “emancipated” when she freely gave it to him.  The Federal Circuit declined to adopt VerHoef’s “domination” theory, finding that Dr. Lamb’s contribution plainly satisfied Federal Circuit case law concerning the conception requirement for inventorship.  The Federal Circuit also rejected VerHoef’s “emancipation” argument since VerHoef had already admitted that Dr. Lamb conceived an “essential feature” of the claimed invention.  Deferring to long-standing USPTO practice requiring examiners to reject applications under section 102(f) on the basis of incorrect inventorship, the Federal Circuit concluded that the Board properly sustained the examiner’s rejection of VerHoef’s application.

Although VerHoef was decided under pre-AIA section 102(f), all inventors must still be named in a patent application under the AIA.  See 35 U.S.C. §§ 115(a)116(a).  While section § 102 no longer directly states that failure to list proper inventorship results in an application being unpatentable or a patent being invalid, the MPEP reminds examiners to reject applications with improper inventorship.  See MPEP § 2157.  Even for applications where inventorship is initially incorrect, such as the VerHoef application, inventorship may be corrected under 35 U.S.C. § 256.

The key takeaway: a person who contributes an essential feature of a claimed invention is a joint inventor and the failure to correctly name joint inventors will result in rejection or invalidation of a patent or patent application.

© Copyright 2019 Squire Patton Boggs (US) LLP

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Jeremy W Dutra Lawyer Squire Patton Boggs
Of Counsel

Jeremy Dutra is a member of the Intellectual Property & Technology Practice Group. His practice focuses on intellectual property litigation, antitrust litigation and complex commercial business disputes.

Jeremy represents clients before federal district courts throughout the country and the International Trade Commission, as well as courts of appeals and numerous state courts. He has litigated cases involving a diverse array of technologies, including automation, stainless steel processing, software, automotive products and consumer electronics. He has also litigated cases...

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Christopher W. Adams, Squire Patton, Patent Litigation Lawyer, information technology Attorney
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Christopher Adams combines more than a decade of certified information technology industry experience with his legal training and skills to assist clients in a broad range of industries with patent prosecution, intellectual property licensing and litigation, technology transfer and related matters. He brings to clients the rare ability to translate information gained in communication with hardware, software and internet developers into a legal context.  

Christopher’s clients include companies in the gaming and e-sports, software development, medical device, telecom, chemical engineering, airline, satellite television, metals and mining industries as well as universities. He represents them in matters related to intellectual property portfolio development and management, patent opinions, patent strategies, freedom to operate analyses and other intellectual property due diligence. 

He advises clients on all facets of the Internet Corporation for Assigned Names and Numbers (ICANN)'s new generic top-level domain (gTLD) program. In his work in this area, Christopher counsels clients on ICANN’s new gTLD program dispute resolutions before the World Intellectual Property Organization (WIPO), the International Centre for Dispute Resolution (ICDR), and the International Center of Expertise of the International Chamber of Commerce (ICC). He litigates for and advises international clients on strategies to combat Internet/email fraud. 

Before joining the firm, Christopher worked for more than 10 years in the information technology field, where he holds numerous industry certifications, including the following active certifications, Microsoft Certified Systems Engineer, Microsoft Certified Solution Developer and Microsoft Certified Database Administrator. Christopher has experience with all phases of the software development lifecycle, as well as other computer related technology areas. Christopher’s technical experience also includes a broad chemical understanding and laboratory research in the area of polymer chemistry. 

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Alex Wolcott, Squire Patton Boggs Law Firm, Patent Prosecution Attorney
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Alex focuses his practice on patent prosecution for domestic and international applicants in a variety of fields, especially the software and computer areas.

Prior to joining the firm, Alex was a patent examiner at the US Patent and Trademark Office for more than three years. As an examiner, he primarily reviewed patent applications relating to e-commerce, payment systems, mobile devices and computer networks. In addition, Alex gained significant experience in subject matter eligibility issues under section 101.

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