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.