Chapter §7.10 Originality Requirement and Derivation Under §102(f)

JurisdictionUnited States

§7.10 Originality Requirement and Derivation Under §102(f)

[A] Originality

Subsection 102(f)819 of 35 U.S.C. (2006) is an anomaly in Section 102.820 It is not a patent-defeating provision in the sense of anticipation by a prior art event occurring before the applicant's invention date, as are §§102(a), (e), and (g)(2). Nor is §102(f) a patent-defeating provision in the sense of an applicant losing a right to patent an otherwise novel invention due to delay in filing for patent protection, as are §§102(b) and (d). Rather, patentability is defeated under §102(f) if the applicant "did not himself invent the subject matter sought to be patented."821 The focus of §102(f) is thus originality—is the applicant for patent truly an inventor of what is claimed?

In describing his familiar "three doors to patentability" metaphor, Judge Giles Rich explained that the mandate of originality is a threshold requirement that must be satisfied before the applicant even begins to confront the substantive criteria of utility, novelty, and nonobviousness:

The person approaching that door [the first of the three doors, 35 U.S.C. §101] is an inventor, whether his invention is patentable or not. There is always an inventor; being an inventor might be regarded as a preliminary legal requirement, for if he has not invented something, if he comes with something he knows was invented by someone else, he has no right even to approach the door. Thus, section 101 begins with the words 'Whoever invents or discovers,' and since 1790 the patent statutes have always said substantially that. 822

[B] Derivation

Section 102(f) is implicated in a variety of patent law contexts. One is the concept of "derivation." For example, in litigation involving an issued patent, an accused infringer may contend that the patent in suit is invalid on the ground of derivation. This defense essentially asserts that the named inventor merely derived the invention of another; that is, he copied the invention of another and then falsely patented it as his own.823

In ex parte patent prosecution, the question of whether a person named as an inventor derived the invention from another is seldom raised. However, derivation does arise in interferences in the USPTO, which are inter partes proceedings.824 Assume that Party A and Party B are engaged in an interference to determine which of them was the first to invent a particular invention. Ordinarily, such a dispute assumes that both A and B are original, independent inventors of the same invention...

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