Patent Law

Not Invented Here

By Gary Odom and Jordan Kuhn

35 U.S.C. §102 - "A person shall be entitled to a patent unless - ... (f) he did not himself invent the subject matter sought to be patented..." §102(f) dates to the 1836 Patent Act, and U.S. case law predates statute. Does §102(f) mean what it says? - That a patent is invalid if not invented by a patent applicant. If so, why is it not applied as such? If not, why not?

Section 15 of the 1836 Patent Act provided for defenses against patent infringement, including what became § 102(f): "that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new." Clearly, the intent of the clause was that a patent grant in the U.S. required that the patent holder must be the first inventor.

It is not unusual for a U.S. patent to be anticipated by another, foreign patent, but that the foreign filing date fails to qualify under other §102 clauses, except possibly (f). §102 (a) is positively nationalistic: "(a) the invention was known or used by others in this country," as if foreigners don't count for invention, unless published first.

If a foreign filer does file for a U.S. patent, and invokes an interference under §102 (g), for first to invent, then its unoriginal contender application would be extinguished. But, if not challenged during prosecution, the unoriginal issues as a patent, possibly with validity assured, save invocation of §102(f) as originally intended.

There's the rub. Nowadays, no one invokes §102(f) in the context of invalidation. One patent text even proclaims that "subsection 102(f) is neither an anticipation nor a loss of right section."

§102(f) most commonly arises with regard to inventorship, particularly derivation and inclusion. Derivation is that another person than the patent applicant conveyed the invention to the applicant, who took it and ran. The result: loss of right.

Inclusion refers to putting in non-inventors, such as supervisors, and leaving out contributory inventors. §256, incorporated into the 1952 Act, lessened the risk of invalidation for inventor misnaming, by providing for error correction without penalty.

§116, amended in 1984, notes that joint inventorship is appropriate even though an individual may have contributed to only some claims.

U.S. law is peculiar in that it requires that applications are filed in the inventor's name, however its assignment to another, most often a corporation. Many foreign countries permit corporations to file patents.

§102(f) does require that applicants claiming foreign priority under §119 must have the same inventor roster for both the foreign and U.S. application.

Moy's Walker on Patents indicates that §102(f) should serve for invalidation, or, at least, that was the original intent, and long held:

The originality requirement in United States patent law is both stable and extremely long standing.

[T]o be patentable, the invention must be original to the patent applicant. ³

³ See, e.g., Reutgen v. Kanowrs, 20 F. Cas. 555, 556, No. 11710 (C.C.D. Pa. 1804) ("[I]f it appears that the plaintiff was not the original inventor . . . he is not entitled to a patent."); Dawson v. Follen, 7 F. Cas. 216, No. 3670 (C.C.D. Pa. 1808) ("[T]o entitle the plaintiff to recover, they must be satisfied that he was the original inventor...."); Gayler v. Wilder, 51 U;S. 477, 494, 10 How. 477, 13 L. Ed. 504 (1850) ("[The patent act] provides that, if it appears on the trial of an action brought for the infringement of a patent that the patentee 'was not the original and first inventor or discoverer of the thing patented,' the verdict shall be for the defendant."); Odiorne v. Winkley, 18 F. Cas. 581, 582, No. 10432 (C.C.D. Mass. 1814) (StorY J. "The original inventor of a machine is exclusively entitled to a patent for it."); Thomas v. Weeks, 23 F. Cas. 978, 981, No. 13914 (C.C.S.D. N.Y. 1827) ("[T]he patentee can sustain his patent only on the ground of his being the original inventor, ..."); Dawson v. Follen, 7 F. Cas. 216, No. 3670 (C.C.D. Pa. 1808) ("[T]o entitle the plaintiff to recover, [the jury] must be satisfied that he was the original inventor....").

For cases distinguishing "first" from "original," see, e.g., Lowell v. Lewis, 15 F. Cas. 1018, 1021, No. 8568 (C.C.D. Mass. 1817) ("Mr. Perkins, being clearly the first inventor, is entitled exclusively to the patent right, although Mr. Baker may have been also an original inventor; for the law gives the right, as among inventors, to him, who is first in time."); Hayden v. Suffolk Mfg Co, 11 F. Cas. 900, 901, No. 6261 W.C.D. Mass. 1862), aff'd, 70 U.S. 315, 18 L. Ed. 76 (1865) ("[A]lthough [the defendant] may have been an inventor, an original inventor, yet, if he was not the first inventor, [the invention] would not give him any exclusive privilege.").

See also Willard Phillips, The Law of Patents For Inventions, 65 (1837) (''To entitle a party to a patent he must not only be an inventor, but also the original inventor...."); 1 Robinson, The Law of Patents, § 78 (1890) ("An invention is the product of original thought.").

It is long past time to resurrect §102(f) for its original intent, in respect to a patent grant representing sanctity of invention, to insist that a United States patent must issue from the original inventor, a "product of original thought."

Full post as published by The Patent Prospector on July 13, 2008 (boomark / email).