2137
2137 35 U.S.C. 102(f)
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
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(f) he did not himself invent the subject matter sought to be patented.
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DERIVATION REQUIRES COMPLETE CONCEPTION BY ANOTHER AND COMMUNICATION TO THE ALLEGED DERIVER
PARTY ALLEGING DERIVATION DOES NOT HAVE TO PROVE AN ACTUAL REDUCTION TO PRACTICE, DERIVATION OF PUBLIC KNOWLEDGE, OR DERIVATION IN THIS COUNTRY
DERIVATION DISTINGUISHED FROM PRIORITY OF INVENTION
35 U.S.C. 102(f) MAY APPLY WHERE 35 U.S.C. 102(a) AND 35 U.S.C. 102(e) ARE NOT AVAILABLE STATUTORY GROUNDS FOR REJECTION
2137.01 Inventorship [R-3]
I. EXECUTORS OF OATH OR DECLARATION UNDER 37 CFR 1.63 ARE PRESUMED TO BE THE INVENTORS
II. AN INVENTOR MUST CONTRIBUTE TO THE CONCEPTION OF THE INVENTION
III. AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS
IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE
V. REQUIREMENTS FOR JOINT INVENTORSHIP
ETHICON
We find that the findings of fact (FF), which appear in the Analysis below, are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the U.S. Patent and Trademark Office (“PTO”)).
VI. INVENTORSHIP IS GENERALLY “TO ANOTHER” WHERE THERE ARE DIFFERENT INVENTIVE ENTITIES WITH AT LEAST ONE INVENTOR IN COMMON
2137.02 Applicability of 35 U.S.C. 103(c) [R-3]
COSTELLO
“[I]n order to overcome a prior art reference . . . appellants must either satisfy the substantive requirements of Rule 131 or establish that the relevant disclosure describes their own invention.” In re Costello, 717 F.2d 1346, 1351 (Fed. Cir. 1983).