Examples - Derived from Another

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Mary sees a wonderful widget in Germany that is unknown in the U.S. and asks her patent attorney, Hedy, whether she can file a U.S. patent application on the widget. Hedy explains that only the true inventor(s) can file for a patent on an invention in the U.S.

Hypothetical Example No. 2. In her employment as a research assistant, Stephanie discovers a novel invention that she discloses to her supervisor, Andrea. Because the invention is a "career maker," Andrea insists that both she and Stephanie be listed as joint inventors in a U.S. patent application. Stephanie agrees, although she knows it is untrue. The application eventually issues as a U.S. patent that is immediately licensed to a manufacturer. When the manufacturer attempts to enforce the patent, it is invalidated by a court under 35 U.S.C. 102(f) because Andrea's and Stephanie's declarations of joint inventorship were fraudulant. Both Andrea and Stephanie were later determined to have committed fraud on both their employer and the licensee.

Hypothetical Example No. 3. Seth and Nikola are listed as inventors in a U.S. patent application. During prosecution of the application, it is learned that Mary should also have been listed as an inventor. Not originally naming Mary as an inventor occurred "through error without any deceptive intent on the part of the actual inventor or inventors" [37 CFR 1.48(a)]. Correction of inventorship is made by amendment of the application. The amendment is accompanied by a petition including a verified statement of facts by the original named inventors, an oath or declaration by each actual inventor, a fee and the written consent of the assignee. A valid U.S. patent issues.

Hypothetical Example No. 4. Orville and Wilbur file a U.S. patent application that contains claims to inventions invented by each inventor. During prosecution, the claims to the inventions of Wilbur are rejected and the rejections cannot be overcome. Wilbur's name is deleted as an inventor by amendment of the application [37 CFR 1.48(b)]. The amendment is accompanied by a petition including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed in the application and a fee. A valid U.S. patent issues.

Case Law. The following examples from U.S. case law teach this concept:

Bergy, In re, 596 F.2d 952, 201 USPQ 352 (CCPA 1979), aff'd sub nom. Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980)
Billottet, Ex part, 192 USPQ 413 (Pat. Off. Bd. App. 1976)
New England Braiding Co. v. A.W. Chesterton Co., 970 F.2d 878, 23 USPQ2d 1622 (Fed.Cir. 1992)

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