CAFC Affirms Rejection of Application for Incorrect Inventorship

The Federal Circuit recently affirmed a decision of the United States Patent and Trademark Office to reject VerHoef’s pending application 13/328,201 for a dog harness under pre-AIA Section 102(f) because the applicant “did not himself invent the subject matter sought to be patented.” In re Verhoef, No. 2017-1976, 2018 (Fed. Cir. May 3, 2018) (Before Newman, Mayer, and Lourie, J.) (Opinion for the court, Lourie, J.)

The dog harness was jointly conceived by a veterinarian and the Petitioner, the owner of a dog being treated with the harness. Conception occurred when VerHoef was meeting with the veterinarian to discuss treatment of the dog and the failures of previous harnesses. Prior art harnesses did not attach to and thereby control a dog’s toes. The veterinarian suggested that VerHoef use a “strap configured in a figure ‘8’ that fit around the toes and wrapped around the lower part of the leg…” VerHoef then implemented the veterinarian’s idea. Petitioner filed an application claiming joint inventorship, but, after relations “soured”, VerHoef and veterinarian filed separate applications directed to the same invention and claimed sole inventorship.

At the Federal Circuit, VerHoef conceded that the figure “8” loop was an essential feature, and did not dispute that the veterinarian, and not he, contributed the idea of the figure eight loop. According to his own affidavit, VerHoef had only recognized the problem of connecting the cord of the harness to the dog’s toes and discussed that problem with the veterinarian. Nevertheless, VerHoef argued that he maintained “intellectual domination and control of the work.” The Federal Circuit rejected this argument because the veterinarian was a joint inventor, citing the case law on conception and joint inventorship.

The Federal Circuit also rejected the argument that an idea can be “emancipated” if freely given (i.e., surrendered for sake of inventorship).

The Federal Circuit also affirmed the PTO’s rejection of the application based on improper inventorship grounds. “Consistent with statutory command and our precedent, the Manual of Patent Examining Procedure (“MPEP”) instructs examiners that in the rare situation it is clear the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship the examiner should reject the claims under pre-AIA 35 U.S.C. [§] 102(f),” Judge Lourie wrote. “This case presents the ‘rare situation,’ or at least an uncommon one, where the ‘201 application and VerHoef’s affidavit make clear that he did not himself solely invent the subject matter sought to be patented…”

Take Away

A person who contributes an essential feature of a claimed invention is a joint inventor. Failure to correctly name the joint inventors of claims in a patent application is a proper ground for rejecting the application or invalidating a granted patent.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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