Caselaw and Updates: From public sources
FEDERAL CIRCUIT AFFIRMS USPTO’S REJECTION OF PATENT APPLICATION BECAUSE OF INCORRECT INVENTORSHIP.
IN RE: JEFF H. VERHOEF, FED. CIR. CASE NO. 2017-1976, 2018.
In this unusual case, the appellant took his dog to a veterinarian to have his dog treated for a mobility condition. During the therapy session, the veterinarian made a suggestion to treat the dog using a certain “”figure 8” configuration harness to its leg and toes. That suggestion apparently alleviated the dog’s mobility issues. Using this idea of the figure 8 configuration, the appellant filed a patent application naming himself and the veterinarian as joint inventors. However, this initial patent application was later abandoned because the joint inventor relationship soured. Subsequently, the appellant and the veterinarian each filed separate patent applications naming themselves separately as inventors for the same identical claimed invention filed on the same day. The veterinarian later abandoned her patent application but the appellant pursued his separate patent application. However, the USPTO rejected the appellant’s application under 35 USC 102(f) based on incorrect inventorship. The Patent Trial and Appeal Board affirmed the Examiner’s rejection. 35 USC 102(f) states that “A person shall be entitled to a patent unless:– (f) he did not himself invent the subject matter sought to be patented.” Here, the appellant admitted that the essential feature of the invention i.e., the specific figure 8 configuration of the harness for the dog’s leg and toe that allegedly improved the mobility of the dog, was actually suggested by the veterinarian. On appeal to the Federal Circuit, the appellant argued that (1) the veterinarian had freely given the leg and toe “figure 8” configuration of the harness idea, therefore she was not an inventor, and that (2) the appellant retained intellectual domination and control over the invention at all times. The Federal Circuit rejected both arguments, agreeing with the USPTO that since the appellant himself admitted that he did not come up with the essential feature of the claim (i.e., the figure 8 harness configuration), the appellant was not the sole inventor and that the veterinarian was a joint inventor.
When an invention is made jointly, the joint inventors need not contribute equally to its conception.. A joint inventor must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.
Here, the initial patent filing of the appellant and the veterinarian declaring their joint inventorship was the raison d'être for the USPTO’s rejection of the subsequent separate patent application by the appellant. Inventorship is more than mere conception. It requires a “definite and permanent idea of an operative invention, including every feature of the subject matter sought to be patented,” “An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan.”
Takeaway: Inventors must be very careful, honest and diligent in attributing ideas to themselves and to others.