With 102(f) Eliminated, Is Inventorship Now Codified in 35 U.S.C. 101? Maybe, but not Restrictions on Patenting Obvious Variants of Derived Information.

By Dennis Crouch

Before the America Invents Act (AIA), the Patent Act included a specific prohibition on patenting something the purported inventor did not actually invent. According to the statute, “[a] person shall be entitled to a patent unless … 102(f) he did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f) (pre-AIA). When that provision was eliminated, Congress was assured by various parties that the inventorship requirement was sufficiently protected by the U.S. Constitutional reference to “inventors” and by the “[w]hoever invents or discovers” preamble of 35 U.S.C. § 101. This position is exemplified by Joseph Matal in his recent article on the creation of the AIA.

Some may think that, because § 102(f) has been repealed, there is no longer any legal requirement that a patent for an invention be obtained by the inventor. Not so. Both the Constitution and § 101 still specify that a patent may only be obtained by the person who engages in the act of inventing. Indeed, even commentary on the 1952 Patent Act noted, with respect to § 102(f), that “[t]his paragraph is perhaps unnecessary since under § 101 it is ‘Whoever invents …’ who may obtain a patent and later sections provide that the inventor must apply for the patent and execute an oath of inventorship.”

Joseph D. Matal, A Guide to the Legislative History of the America Invents Act: Part I of II, 21 FED. CIR. B.J. 435 (2012).

To be clear, even under this duplicative construct we should recognize that Section 102(f) does have the important effect of eliminating 102(f)/103 prior art defined by the 1997 OddzOn Prods decision. The 102(f)/103 scenario is probably best termed a “derived knowledge” situation that occurs when an applicant learns of an invention created by someone else and then comes-up with an obvious variant of that invention. Under pre-AIA law, the resulting patent would properly be invalidated on 102(f)/103 obviousness grounds even if the prior-invention had never been made public or the subject of a sale. By removing 102(f), the AIA also removes the prospect of 102(f)/103 prior art. In his AIA article, Robert Armitage writes “subsection [102(f)] had become, as far as the courts were concerned, a prior art provision for assessing obviousness.” Understanding the America Invents Act its Implications for Patenting, 40 AIPLA Q.J. 1 (2012). Armitage explains why the change is particularly fitting as part of the move-towards transparency embodied by the AIA first-to-file rules.

Moreover, putting a “prior art” provision of pre-AIA § 102(f) ilk into the new law would have undone the transparency/objectivity reforms that its elimination by the AIA worked to perfect. Congress simply rejected the notion that every individual named as an inventor on a patent application should be queried to determine what secret or private information the inventor was already aware of, from the work of someone else, at the time the invention was made by that individual. Congress rejected the notion that the inventor’s private knowledge learned from others should then be provided to patent examiners to determine whether the inventor’s claimed invention could be nonetheless regarded as “obvious” (perhaps in combination with other prior art).

Armitage at 98. Armitage and Matal were both instrumental in the development and passage of the AIA. Their well written articles explain the choices made in the AIA legislation and attempt to explain their visions for how ambiguities should be interpreted. Professor Sarnoff agrees with Armitage here that the AIA removes knowledge that a putative inventor obtained from another is no longer prior art. In his Patently-O Patent Law Journal Article, Sarnoff wrote:

By eliminating existing § 102(f), the new act removes the substantive prior art basis that used to prevent patents on derived inventions that are the same as or obvious in light of the derived knowledge. Because § 102(f) was treated as prior art for obviousness, it provided substantive grounds for denying or invalidating patents on obvious variants of a derived invention (e.g., applications or improvements of, or additions to or modifications of, a derived invention) as well as to the derived invention itself.

Joshua D. Sarnoff, Derivation and Prior Art Problems with the New Patent Act, 2011 Patently-O Patent Law Journal 12.

Sarnoff absolutely agrees with Armitage that the law will no longer prevent an applicant who derived an invention from obtaining a patent on an obvious variant of that invention. I.e., the USPTO has no tools to prevent a third party from patenting obvious variants of information obtained from another. Now, the AIA does provide for a third party to initiate a derivation proceeding or a civil action for derivation. However, it appears to me that those actions (even if timely filed by the originator) would be unsuccessful because derivation proceedings are limited to cases where the derived claims are “substantially the same” as the originator’s innovation. The substantially the same limitation is much narrower in scope as compared with the potential wide variety of obvious variants. Sarnoff largely agrees with my analysis here, but in a more equivocal manner.

The new derivation procedure and civil action also may be inadequate to prevent the deriving applicant from obtaining the patent on an obvious variant even when the originator does file a derivation petition, when the original inventor learns about the obvious variant from the deriver (and had not earlier conceived of the obvious variant). And in litigation defending against the deriver’s patent on an obvious variant, an unrelated third party may be unable to challenge the deriver’s patent for obviousness (although it may be able to challenge it for improper inventorship, but only if the elimination of § 102(f) has not undermined the substantive basis for such invalidation.

Sarnoff (emphasis added).

Unlike Armitage & Matal, Mark Stadnyk is a total Washington DC outsider. His company MadStad designs and sells after-market motorcycle parts (mainly windshields and accessories). MadStad and Stadnyk filed suit in 2012 challenging the AIA as an unconstitutional modification of the US patent laws and asking the federal court to render the law null and void. One of the argument MadStad presents is that the statutory elimination of 102(f) is problematic because it runs contrary to the IP enabling clause of the US Constitution. The US Constitution empowers Congress to develop a patent system that grants rights to “inventors.” And, according to MadStad, the new AIA creates a system where (1) non-inventors can apply for patent and (2) rights wrongly granted to non-inventors cannot be challenged in court by negatively affected third-parties.

In its response to MadStad, the USPTO recently presented its idea regarding inventorship. The USPTO rejects MadStad’s argument and instead follows Matal’s “duplicative” theory. (Matal is now an assistant solicitor at the USPTO.)

The USPTO writes:

The AIA does not sanction the award of patents to anyone but inventors. Retained verbatim—unaltered by the AIA—section 101 continues to restrict the grant of patents to inventors. Section 101 states: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101 (emphasis added); see AIA, passim (no changes to § 101). By retaining section 101, the AIA still requires as a condition of patentability that the named inventor actually invent the claimed subject matter.

Nevertheless, Plaintiffs remarkably allege that the AIA eliminates the inventorship requirement and thus will allow an individual who is not an inventor to obtain a patent. The basis of their claim is that the AIA deletes section 102(f), which provides that a person will not be entitled to a patent if he “did not himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f). Plaintiffs accordingly allege that, without section 102(f), “being an inventor is no longer a condition of patentability” nor “a requirement of patent validity under Section 282 of the Patent Act,” which establishes the defenses in any action involving the validity or infringement of a patent. Plaintiffs’ allegations are legally incorrect. Both the Supreme Court and the Federal Circuit have concluded that §101—which the AIA retains—is a condition for patentability and can be used as a defense in an action involving patent infringement and validity.

Thus, according to the USPTO, the AIA’s deletion of the redundant requirement in 35 U.S.C. § 102(f) is irrelevant, as section 101 will continue to require that a patent only be awarded to an inventor.

Moving forward, the question is what work do the US Constitution and Section 101 actually do on the inventorship front? The link between patents and their inventors is strong and deeply rooted. As such, it is unlikely (in my view) that MadStat is correct in its argument that Section 102(f) was the only provision guaranteeing continuation of that link. An important question, however, is what to do about the inventorship requirement of the IP empowering clause. Are the limits of that clause implicitly embedded into the conditions and requirements of patentability or, instead, do we use those limits to invalidate legislation that fails to conform to the constitutional restrictions.

Prior to the 1952 patent act, lack-of-inventorship was a condition for patentability under the precursor to our Section 101 and was explicitly listed as a defense that a defendant charged with infringement could plead under the precursor to our Section 282. Thus, “the defendant may plead … That [the patentee] was not the original and first inventor or discovered of any material and substantial part of the thing patented.” See RS § 4920 (Patent Act of 1870).

There are real ongoing questions that stem from the elimination of section 102(f): Is Armitage correct in his assessment of the law that a third party can now patent an obvious variation of an idea secretly learned from the true inventor? Is the USPTO correct that a patent can be challenged for improper inventorship as a violation of 35 U.S.C. 101?


96 thoughts on “With 102(f) Eliminated, Is Inventorship Now Codified in 35 U.S.C. 101? Maybe, but not Restrictions on Patenting Obvious Variants of Derived Information.

  1. 96

    MM: “Please identify the invention and the previously unobserved phenomenon in each of those cases, and quote the holding from the case which contradicts my comment about the effect of previously unobserved natural phenomena on the patentability of inventions under 103.

    Shouldn’t you first identify an authority for your statement other that your own statement?

    Asking anyone to cite Supreme Court holding that overrules your personal opinion is beyond ridicules, even for you Mooney.

    Last time I checked you could not claim a judicial exception by itself, even if you just discovered one that is a previously unobserved phenomenon.

    Prometheus already told you that judicial exceptions, a LON in that case, has to be applied and “integrated” into the process as a whole in order to be a patent eligible application of the phenomenon, or LOA.

    I suspect you might understand the “application” part but the “Integration Analysis” is what has you unsure and a bit unsteady.

    Am I right?

  2. 95

    “I think Prometheus required doing something practical with the LON — however, there is another view.”

    Hello Mr. Heller:

    You are close here but just a bit off. Prometheus required that the LON be “integrated” with the process as a whole. The Court based this on the holding in Diehr that viewed the formula in that case in conjunction “integrated” with the process as a whole.

    I honestly believe that if you had not ducked having a substantive discussion of “Integration Analysis” you would understand this by now.

  3. 94

    IANAE, OddzOn was really about misappropriation and theft. The real inventor was not the OddzOn inventor, but the inventor/company from whom they stole. I think the patent laws are not offended if the true inventor, by some procedure, can be named as a the inventor or coinventor. The question then becomes, is it valid and enforceable only after the true inventor is named?

    Like you, I now question whether claiming obvious variants of subject matter pirated from another is invention at all. It really is the same thing.

    But Armitage, is seems, did this intentionally, perhaps because most obvious-variant situations arise in the context of co-ownership of the basic invention. I see merit in exluding such co-ownership/derivation situations from invalidity considerations, and it was under the prior law using the exclusion found in 103. But the new law is not so limited. The true pirate/misappropriator now it seems can obtain a valid patent on the stolen technology simply be dressing it up a bit. But, this is not his invention, is it? Yet, it seems, Armitage fully intended that the pirate obatin a valid patent on the stolen invention and that it be enforceable regardless.

  4. 93

    The new aia is a joke of corruption with reguards to the dual same time conception statute and awarding the patent to who has the nicest high tech perfection application.All this does is stop marketable invention filings because the genuine conciever knows there will be no justice for him. First the odds of seperate same time identical conception is astronomically impossible there for shouldent even be in the legislation. Secondly awarding to the high technically correct filer stops genuine concievers from filing haulting the inventions from all but those with the education which is 1% of the population or less denying the other 99% the right to a patent and to collect technical writers to perfect his application fraud.

  5. 90

    My opinion on this has been expressed before – the conflation by earlier courts for protection under Trade Secret and for protection under Patent was in error.

    As I have point ed out (and you refused to join the conversation further) Trade Secret protection is already for unlimited times. It makes no logical sense to take the protection afforded under Trade Secret and apply it as protection under Patent. It simply does not matter how long something is secret – used for commercial gain or not – if that item is STILL secret when the patent process is joined, it STILL meets all of the requirements of the patent laws and the public STILL receives a FULL Quid Pro Quo. My opinion is that the Courts wrongly injected policy and law making where they had no business doing so. That type of policy decision is expressly given to Congress by the constitution.

    If anything, this is the gem of the AIA to strip the courts of this.

    Clearly, your example of foreign applicants shows additional logic why that is so.

  6. 88

    if we phrase the question in a poll

    Immaterial Ned – Congress already took that poll by voting for the AIA.

  7. 87

    BTW, it long bothered me that "on sale" was limited to the US in the former 102(b). This "hole" seem to me to permit a foreign applicant to commercially exploit his invention outside United States forever and still obtain a US patent.

    What's your opinion on this?

  8. 86

    Anon, well if we phrase the question in a poll as to whether congress could constitutionally allow one to practice an invention in secret indefinitely and still obtain a patent on it, I think I know where the majority would be on that issue.

  9. 85

    Yes, and Pennock as well.

    Well it appears that we agree on that.

    I think this renders the AIA unconstitutional.

    Well, we definitely don’t agree on that (for reasons we’ve previously discussed).

  10. 84


    Also I note that actions under section 116 and 256 require that the failure to name an inventor, even the sole inventor, was through "error." Deceptive intent has been removed from both statutes. However if the applicant or the patentee did not fail to name the true inventor through error, then it would seem that the true inventor has no statutory cause of action at all. The result seems perverse because the only time the true inventor would ever sue under the statutes is if the applicant or the patentee did not agree, or pretended not to agree, that the omitted inventor was an inventor or the inventor of the subject matter of the application or patent.

    In other words, bona fide errors may be remedied under the statutes. However, the victim of theft may be left with no statutory remedy because there was no "error," leaving him to state causes of action in equity for trade secret misappropriation, theft or the like.

  11. 83

    Yes, and Pennock as well.
    They intended to limit on sale to information available to the public.  The latter clause was intended to allow secret disclosures and use.  Senator Kyl's statements to this effect are clear.
    Under the AIA, secret use is not prior art to anybody, including the applicant.
    I think this renders the AIA unconstitutional.

  12. 82

    If he files second, why not permit him to invoke a derivation proceeding?

    Upon review, there are problems with this path of your logic Ned, beyond the already mentioned fact that the derivation procedure requires the non-pirate to join in the patent process, something he may be fundamentally against.

    Truth in point is that “invention” may in fact be completed by more than one person independently of each other (in the race analogy, many can be invited to partake in the race). The problem with derivation is that you have to prove that the sham Pirate derived from you personally.

    But what if the sham Pirate derived from another?

    In my Rick Crown example, what if it was Coke that the sham Pirate ripped off and not Mr. Crown? Coke already has no interest in pursuing patent rights to pursue the derivation path (for starters, such a path would mean that Coke itself would have to surrender its Trade Secret). Further, Mr. Crown, even with evidence that the sham Pirate ripped off Coke, could not prove (even if he wanted to pursue a patent and apply the derivation path) that the sham, Pirate derived from Mr. Crown himself, because in fact, the sham Pirate did not derive from Mr. Crown himself.

    Bottom line, the derivation process is not enough protection.

  13. 81

    Ok heres a good example I actually invented the original coke formula at DYC detroit in conversation. I invented the improved coke formula in conversation with fellow factory employees at anker holth port huron. the chemists and coca cola are the sham inventors when do I get a patent.

  14. 80

    tiresome. Long ago

    On the contrary, this topic has quite the immediacy.

    Straight up questions for you Ned:

    Do you think that the new fiat of Congress in the AIA overrules Judge Hand and Metallizing Engineering Co. v. Kenyon Bearing & AP Co.?

    Why or why not?

  15. 79

    You definately need to tell the patent examiners about this they are just passing other applicants by my application and isueing to them. They need to specify my concept of parent patenting and disallowing sub invention patenting until the original parent has expired.

  16. 78

    Ned, It’s not my turn, because you haven’t taken your turn (at addressing my points) yet.

    Please address the points that I have made.

  17. 77

    Ownership disputes have nothing to do with whether an patent is valid. That is the whole point here

    Once again Ned, you are not addressing the points I am raising.

    Of course, validity has nothing to do with the issue here – it’s a red herring.

    Please re-read my posts and address the points I am raising.

  18. 76

    anon, assume for this argument we are discussing a patent of importation, meaning, an invention long in use in China, for example, to cure a common ailment.

    Our “inventor” while on a mission of systematic discovery of folk remedies, carefully notes down what plants are used, how they are mixed, and how they are administered.

    He then figures out, as best he can, what really is going on. But even if he does not figure it out, assume he simply describes what he found in his specification.

    He files and obtains his patent, describing the folk cure.

    Now, our “inventor” is not strictly and inventor, but a researcher. Whoever invented is long buried, perhaps even before Caesar crossed the Rubicon. What is important is that prior to our researcher’s efforts, the cure was unknown in the US.

    Now the patent covers only the US. The use of the cure in China is not affected. The Chinese people are not adversely affected by the US patent.

    I contend that the researcher has benefited the US, and that under the AIA, his patent might just be valid if a court determines that the practice in China was essentially secret and not prior art.

    Your turn.

  19. 75

    The real question is whether allowing patents of importation or the like is beneficial to America.  According to Max, that is the way the rest of the world operates because they really do not care or condition validity on inventorship, but upon whether the invention is available to the public.

  20. 72

    How is the public harmed by new technology?

    I don’t know, is it some kind of death ray or something?

    Where to begin?

    1. “Where is the harm?” is not a constitutional argument.

    2. Nobody said the public was harmed “by new technology”.

    3. The effect of granting a patent to someone who does not deserve it is not to bestow new technology on the public. It’s closer to the opposite of that.

    4. The fact that the Constitution permits something to be done doesn’t mean that nobody is harmed. The Constitution permits declarations of war, for example.

  21. 71

    Yes I did.

    (and it is immaterial whether you step away – slowly or not – or stay at the thread).

  22. 70

    That is the real holding of Prometheus as well.

    How on God’s Earth do you make that leap?

  23. 69


    I am shocked that you forgot to mention the most recent case from the Supreme Court that demands that something more than just a law of nature and “apply it” is required: the 9-0 Prometheus case.

    You know that case, it’s the one that solidly says these are 101 and not 112 issues.

  24. 68

    anon, the intent of the harmonizers is clear.  Look to Max for a better explanation of how the new system is supposed to work and whether it harms the public.  Ownership disputes have nothing to do with whether an patent is valid.  That is the whole point here.

  25. 66

    the judicial exceptions from 101 negate your position so thoroughly that the aspect of “prior” does not have to be reached.

    LOL. You really showed me, anon.

    [steps slowly away from the thread]

  26. 64

    Anonymous, 1790:  England had patents of importation whereby new technology found in the world could be brought back to England and patented.  The English law granted the patent to the first to file, not to the first to invent.

    Our FF thought we could not grant patents of importation because the constitution limited the power to granting patents to inventors.  Thus they limited the grant to "original" inventors.  Patents could not be granted to inventions novel in the US, but known elsewhere where the patent applicant had learned of it and brought it to the US.

    As well, this applied in the US to those who learned of the invention from others.  They believed the constitution limited the power to grant patents to only inventors and not to those who learned of the invention from others in the US.

    The constitutional question is once again on the table with the repeal of 102(f).  Can we grant patents to non inventors if we allow the true inventors a remedy?

  27. 63


    A question you did not answer previously:

    It is clear they wanted to keep them out of [ ] the courts

    Does the sham Pirate have a right to even be in court in the first place?

  28. 62


    No. You have not addressed my points. Saying the public is not harmed is not good enough as the public is harmed if someone who has no right to the (valid) patent is enforcing a right they do not have. Remember the details I set forth: the true inventor does not believe in patents and refuses to engage the patent system and you have an independent (other) inventor who has neither a patent or a PUR that is being accosted by the sham Pirate.

    Speak to my points please.

  29. 61

    Fish, again, there appear to be two lines of authority on this.  Prometheus gave a nod to both.  However, I think the better view is that expressed in the first cases, Le Roy v. Tatham and Morse.  The newly discovered phenomena is not prior art.  However, one must, however, invent some useful application of it.  One cannot claim the phenomena in the abstract.

    That is the real holding of Prometheus as well.

  30. 60

    The public is not harmed per the constitution.

    That’s a very curious interpretation of the Constitution.

  31. 58

    Max, thanks for the clarification.  It is clear that our harmonizers that crafted the AIA wanted to remove inventorship from validity, and concentrate prior art, etc.  Ownership disputes were not patentability disputes.  It is clear they wanted to keep them out of the PTO and the courts as best as possible.

    Makes sense.

  32. 57

    anon, huh?  I don't follow you statutory construction.

    1. 101 is either controlled by 102 or it is not.  If by 102, then prior invention is by another is not grounds for invalidity.  If by 101, the limitations on prior art do not apply to 101.  If obtained the invention from a prior inventor regardless of its prior art status, he is not an inventor.

  33. 56

    anon, if you want to talk policy, OK.

    1.  The patent discloses new technology and grants the owner a period of exclusivity.  The public is not harmed per the constitution.
    2.  The person who is harmed is the original inventor.
    3.  The person who is harmed has a remedy.


  34. 54

    What sense are you using “pirate” — a person who attacks and robs ships at sea? I understand we’ve basically changed the definition of late, but you are also talking about 1790 so maybe there’s some history that I’m missing.

  35. 53

    Please identify…

    No. I need not do more than provide the pincite that refutes your position – as I have done.

    The matter is quite simple, and needs nothing further. Pure and simple, pur your own version of “whatever” treatment, the judicial exceptions from 101 negate your position so thoroughly that the aspect of “prior” does not have to be reached.

    And in case you missed the subtlety, this points out your multiple legal errors on your treatment of the law of nature (includes products of nature) judicial exception as well as your tendency to conflate when it serves your whims.

  36. 52

    Wrong MM – see Diamond v. Chakrabarty, 447 at 309, quoting Funk Bros. Seed Co. v Kalo Inonculant Co., 333 US 127 at 130.

    Please identify the invention and the previously unobserved phenomenon in each of those cases, and quote the holding from the case which contradicts my comment about the effect of previously unobserved natural phenomena on the patentability of inventions under 103.

    And we can, of course, truncate the conversation soewhat by admitting that Funk Bros. is among the most poorly reasoned and incomprehensible du-du opinions ever written by the Supremes (whether or not you agree with the conclusion).

  37. 51

    Not following you, Ned. My application of the teachings of the natural phenomenon is a practical application. My question is whether the natural phenomenon which I observed (and which of course I did not invent) is prior art against me, and if so under what statutory section. Thx

  38. 50

    Antwoordde ik daar. Morse rustte haar wettelijke bevoegdheid op wat we nu weten te vinden in hoofdstuk 112 zijn. Men kan geen aanspraak maken op principes in de abstracte, omdat de statuten vereisen een om te beschrijven hoe te maken en gebruik maken van een uitvinding. Zelfs indien toont hoe een voorbeeld, heeft een niet elk voorbeeld beschreven.

  39. 49

    Thanks Ned for your trenchant:

    “The repeal means something. It means that third parties cannot challenge inventorship. The original inventor has his remedies, but they may not be asserted by infringers.”

    So there was some harmonisation with patent law in Europe, after all.

  40. 48

    Yes Ned, your two questions:

    1) patents of importation, called “communication inventions” in the UK. In the 1949 UK Patents Act they are nowhere to be found. My knowledge does not go any further back than that. The 1949 Act defined the prior art in a way that did not include oral disclosure or use outside the jurisdiction. Since 1978 we have had “absolute” novelty.

    2) Applicant must be inventor? Never. One must distinguish between the one who owns the invention and its actual deviser (the inventorship entity). Usually, the inventor is an employee and the employer is the owner so the employer (or the group company that holds the group’s IPR) typically files the patent application in its name, naming the inventor as the inventor. For the patent to be valid it must have been granted to the owner and nobody else. Note that there is time during prosecution to sort out all the ownership issues, because the law in Europe allows anybody to apply to the PTO for a patent.

    We should I think distinguish between what is logical, and what in practice fits with the difficulties of pursuing derivation litigation under US law.

  41. 47

    Your reply falls short.

    See my reply to your reply.

    Besides which, if the court can stretch 101 to cover old 102(f), they surely can stretch it to cover the commone owners situation as well.

    After all, what you are talking about is the judges simply rewriting the law of 101 as they want to.

    Do you really think that that is something new?

  42. 46

    This answers not my point about forcing someone to engage in the patent system, nor my point about protecting the public (you do remember that the public is affected, that the sham Pirate is holding the public at bay – regardless of the validity of the patent).

    Speak to my points, not yours (no one is buying the misdirection of 256 and validity, because, quite frankly, that is a red herring).

  43. 45

    a form of abandonment

    That, sir, is form over substance.

    To wit: If an invention is used by the public, with the con-sent of the inventor, at the time of his application for a patent, how can the court say that his case is nevertheless such as the act was intended to protect? If such a public use is not a use within the meaning of the statute, how can the court extract the case from its operation and support a patent, when the suggestions of the patentee were not true, and the conditions, on which alone the grant was authorized, do not exist?

  44. 44

    Anon, see my reply just now. If someone steals an invention, I think they have a cause of action for misappropriation of trade secrets or theft. They also have a cause of action under section 256 for correction of inventorship. I don't see the problem in keeping the patent valid.

    I do see a problem in recognizing section 101 as independent source of authority that is akin to section 102F. The the exclusion for common owners and common researchers apply only to 102, and do not apply to 101. We may be opening a can of worms if we say that 101 provides an independent grounds to prevent patents of importation and/or derivation.


  45. 43

    Anon, see my reply just now. If someone steals an invention, I think they have a cause of action for misappropriation of trade secrets or theft. They also have a cause of action under section 256 for correction of inventorship. I don't see the problem in keeping the patent valid.

    I do see a problem in recognizing section 101 as independent source of authority that is akin to section 102F. The the exclusion for common owners and common researchers apply only to 102, and do not apply to 101. We may be opening a can of worms if we say that 101 provides an independent grounds to prevent patents of importation and/or derivation.


  46. 42

    Anon, the real rationale behind section 102F and its progenitors was to prevent patents on importation and to prevent piracy. Both.

    Regarding the third-party inventor, he can, if he wants, sue the misappropriator for damages and for an correction of inventorship of the patent, which he can dedicate to the public if he so chooses. But, if he chooses to keep the patent, it should remain valid. Why don't you read section 256 to us? It seems to allow correction of inventorship without declaring the patent invalid.

  47. 41

    Fish, I think the issue still is whether the product of nature enabled the application.

    I have reported here before that there appear to be two lines of authority on 101 issues: a first line that requires only that there be a practical application. A second line of authority seems to assume that the product of nature or law of nature is prior art and that there be invention over that. I think the latter line of authority, which finds its origins in Funk Brothers, misreads Le Roy v. Tatham and O'Reilly v. Morse which only required a practical application, not that the law of nature be considered prior art. In other words, there is a clear distinction between law of nature as prior art, and a requirement of demonstrating a practical application which is more of a section 112 issue.

  48. 40

    anon, one's own commercial exploitation is a form of abandonment.  It is not prior art against third parties.  Otherwise, the limitation that use and knowledge be public would be meaningless. I suggest you read Learned Hand's opinion and Metalizing Engineering.

  49. 38

    Wrong MM – see Diamond v. Chakrabarty, 447 at 309, quoting Funk Bros. Seed Co. v Kalo Inonculant Co., 333 US 127 at 130.

  50. 37

    Obviously, he is not the first to file as they would nullify the discussion. You ask why not let him pursue a derivation proceeding? I ask why force him to pursue a derivation proceeding? What if he is like one of our tech dirt or slash dot friends with “moral convictions” against owning a patent – and at the same time does not want the Pirate to have a patent? What then? (See my other posts on this topic having to do with the public being protected from those who do not deserve patents).

  51. 36

    so this natural phenomenon is not prior art against me, MM?

    Correct. A previously unobserved “phenomenon” is not “prior art” against anybody.

  52. 35

    What if the original inventor does not want a patent (and does not want anyone else to illicitly have his patent)?

    Do you force someone to engage the patent system in order to prevent someone from unjustly having a patent they shouldn’t have?

    The rationale behind 102(f) was not only to protect the rightful inventor – it was to protect the public from someone who should not have a patent. That public is left disenfranchised with the removal of 102(f).

  53. 33

    Per Pennock, private knowledge may be public knowledge. Recall that the method of making the hose was indeed private knowledge and the method was deemed public because the product of the method was itself openly admitted to be public.

  54. 32

    If, 101 provides an independent source of a “condition” that the named inventor must have invented the subject matter claimed, and in view of the fact the former exclusions provided by 103 concerning 102(f) about collaboration and joint ownership have been removed, recognizing a 101 requirement invention will reintroduce all the problems that were once fixed by the exclusion of 102(f) in the case of common ownership and joint research.

    In a lawsuit, a disclosure in a 102(e)-type (new 102(a)(2))reference by another inventive entity might be used under the new 101 condition as a basis for holding the that the named inventor in the present application did not invent the invention claimed. The exceptions of 102(b) do not apply to Section 101.

    Cf. Agawam Co. v. Jordan, 74 US 583 – Supreme Court 1869

    We should not go down this path.

  55. 31

    Fish, prior art requires enablement, even in the 102(f) context. Cf. Agawam Co. v. Jordan, 74 US 583 – Supreme Court 1869, link to scholar.google.com

    the leading case on 102(f) prior art prior to OddzOn.

    How does the observation if a natural phenomena fully enable a practical application? If it does, then you might have a problem.

  56. 29

    you witness unique burning properties of certain naturally occurring articles caused by volcanic conditions.

    Okay. As long as you avoid the Prometheus issue (e.g., a claim that recites an old conventional step and thinking about this new ‘natural event’) or try to claim the ‘natural event’ itself, you don’t have an obviousness problem.

    Why would you think that you do?

  57. 28

    Okay, but I am sure that others can come up with better hypos — you witness unique burning properties of certain naturally occurring articles caused by volcanic conditions.

  58. 27

    Let’s assume that my new device would have been obvious in view of that natural event [that was never previously reported]

    Why are we making this assumption?

    It seems like a very strange assumption. What if the “natural event” was a dream? What if you didn’t actually see it? Does it change the analysis? Why? Cite please.

    How do you know that the previously unreported observation was a “natural event”? Because it happened in the woods? What if the same event was observed for the first time in a laboratory? Is it then an “unnatural” event?

    How is that natural event classified as “prior art”?

    What is your definition of “prior art.” It’s not “prior art” for legal purposes unless someone can prove that it existed prior to the effective date of your invention (i.e., the filing date in most of the world).

    Bottom line: this is a pointless conversation to have in the abstract. Better hypos please.

  59. 25

    If the independent inventor goes into production, he has prior user rights, just as coke.

    Let’s say he does not have PUR (for example, his public business event was only six months prior and not a year).

    Let’s make it interesting and add that he has proof the sham inventor is a Pirate.

    Same question as before.

  60. 24

    Dennis, assuming for the moment that 102(f) is gone, that 101 is not an equivalent or does not include obvious variants,

    what becomes of “admitted prior art?” If the statement of admitted prior art does not include an admission that the admitted prior art was in public use, etc., can an applicant overcome a 103 rejection based in part on admitted prior art on the grounds that there is no admission that the art is not publicly available now that 102(f) is gone?

    I have had numbers of occasions were private company information was described as background art and used against me in rejections. I think I can now overcome those rejections with the repeal of 102(f).

  61. 23

    fish, rejection?

    How is PTO going to find out unless you tell them in your spec. But if you do, try this:

    Claim 1 is rejected over the Admitted Prior Art under 35 USC 103.

    See, In re Bergstrom.

    The statutory basis for admitted prior art is


    Oh Oh!

    1 0 2 (f)!!!!!!!!!!!

  62. 22


    The pirate has a patent on the coke formula and someone later independently invents? What?

    If the independent inventor goes into production, he has prior user rights, just as coke.

  63. 21

    Why should anyone else be allowed to challenge inventorship.

    Rick Crown independently invents what turns out to be the Coke formula.

    He is sued by the Pirate sham inventor.

    Do you think that he should be able to defeat the ill-gotten patent?

  64. 20

    in my hypothetical it is not his research but merely his observation of a natural event previously unobserved by anyone else

  65. 19

    anon, of course.  And that distinction was made in Pennock v. Dialogue.  Private use is not public use.  Private knowledge is not public knowledge.

  66. 18

    Coke uses its formula for 200years in secret. Someone breaks in without Coke knowing what happened, copies the formula, and files a patent on it. Now everyone knows of the formula. Coke can assert prior user rights. But in 20years, the public can make coke.

    Coke cannot say the patent is invalid because their secret use is not prior art.

    Coke can obtain ownership of the patent under 256 if they can prove the piracy.

    Why should we allow defendants to go on fishing expeditions into inventorship in court? Why? The claimed invention is described, enabled and novel over the prior art? The person from whom the invention was stolen is protected and can obtain ownership of the patent if he proves the theft in court. Why should anyone else be allowed to challenge inventorship.

    102(f) was repealed. That was an intentional act of Congress. 102(f) or it equivalent was in our laws since 1790 to allow patents only to original inventors, and not on patents of importation. But it was repealed.

    Think one can limit 101 inventorship to exact copies? Think obviousness-type double patenting.

    The repeal means something. It means that third parties cannot challenge inventorship. The original inventor has his remedies, but they may not be asserted by infringers.

  67. 16

    Max, England allowed patents of importation at the time England gratiously agreed that the colonies were independent. When, if ever, was this ended. When, if ever, did England require the named applicant to actually have invented the subject matter disclosed?

  68. 14

    Patrick, see my post below for more on the history of this topic. But indeed, it would frustrate the statutory scheme to allow anyone at any time to continue to challenge the validity of patents based on inventorship. The original inventor can obtain ownership via 256. Also, if he files second, he can be named in the first filed patent as the inventor via a derivation proceeding.

    Allowing challenges to inventorship under 101 is ridiculous, IMHO.

  69. 13

    Let’s assume that my new device would have been obvious in view of that natural event. How is a 103 rejection worded?

    If there were a requirement for the claimed invention to be non-obvious over the immediately preceding step of the inventor’s own research, we’d be in real trouble.

  70. 12

    Malcolm, have you considered section 256? The original inventor can obtain the patent through a 256 action. Would value would his action be if nevertheless the patent was invalid?

  71. 11

    So in my trips to remote corners of the globe I observe a natural event, never previously reported. And on my way home I think of a new device which uses a small principle of that natural event and file a patent application on my new device. Let’s assume that my new device would have been obvious in view of that natural event. How is a 103 rejection worded? How is that natural event classified as “prior art”?

  72. 10

    IBP, I replied there. Morse rested its statutory authority on what we now know to be section 112. One cannot claim principles in the abstract because the statutes require one to describe how to make and use an invention. Even if one shows how to make one example, one has not described every example.

  73. 9

    From a statutory point of view, Congress in 1790 did not believe that present day 101 would prevent patents of importation. They added the requirement that the applicant be the (an?) original inventor both directly as a requirement for patentability and indirectly as a defense.

    Frederico divided out today’s 101, from yesterday’s RS 4886. He placed in the new 102 “f” and “g,” subject matter that was not in RS 4886. He believed that was necessary, because one of the things he also did was limit the scope of the defenses set forth in 282 to the conditions of patentability set forth in sections 102/103, the requirements for patentability set forth in 112, the requirements of section 251, and any other provision of Part II that specifically stated that the patent would be invalid for violation. There is at least one that I know of.

    The unmistakable implications of what Frederico did was that anything that was not specified in these specific conditions could not invalidate a patent.

    Now we remove both “f” and “g.” This would seem to suggest that patents of importation (some would say piracy) would be permitted had the present statute been the statute passed in 1790. This is one of the reasons that we made public use “universal.”

    The concept that patents of importation would now be allowed is what we need to focus on. If the founders did not believe that a what we now know to be 101 would not prevent by itself granting patents on inventions where the applicant himself was not the original mentor, then the removal of 102(f) would seem to suggest that a challenge that the named inventor was not the original inventor would not be grounds for a validity challenge.

    This all makes sense. I believe that one of the major purposes of the new act was to eliminate inventorship challenges altogether except in the limited context of derivation proceedings where the validity of a second filed patent was imperiled by the presence of the first file patent, and the subject matter was taken from the inventor of second file patent. You will note that there is a one year statutory limit on filing derivation proceedings.

    Outside this context, the statutory scheme seems to permit patents on inventions that meet all the conditions of patentability – namely they are valid over the prior art, comply with section 112, etc. A first inventor who has not publicly disclosed his invention has no right to complain. If he is in commercial use, he has prior user rights.

    If there is a violation, it is only in this: it is unethical to allow a pirate to obtain a valid patent. However, I think equity and the statutes (e.g. 256) will permit the true inventor to obtain ownership of the patent and name himself as the inventor. Thus, the true inventor is never harmed. The statutory scheme is complete. The patent is valid despite it being obtained by a pirate.

  74. 8

    Fantastic. But why are you bothering? The chance of your draft being adopted is zero, isn’t it?

    Inventorship rights these days are quite a problem, right. What with individuals from various jurisdictions all looking at the same employer’s screen and collectively conceiving an invention for their employer, and then reducing it to practice, what with computers making inventions, not to mention patent attorneys. Ownership is a much simpler concept, no?

  75. 7

    Ssshhhhhhh, don’t talk about equitable remedies around here!

    Patrick, why don’t you think about it more yourself and post something of more substance, rather than just asking a question?

    I would be interested in YOUR take on the matter.

  76. 6

    Dennis, I agree that the elimination of 102(f) had the legal effect that Armitage / Sarnoff stated. However, their construction seems based purely on statutory interpretation. I don’t think that 102(f) got subsumed magically into 101.

    If the patenting of inventions “derived” from a “true inventor” is deemed inequitable, might courts apply an equitable remedy, akin to an obviousness-type patenting bar, to the supposed “derived” invention? Courts have all kinds of equitable remedies up their sleeves. Would be interested in your response.

    Excellent article.

  77. 5

    Yes, yes, Max, we all know that you consider the blank-slate starting point to be the sine qua non of a consistent, fair, and rational patent regime.

    I hereby volunteer to draft an entirely new patent statute for the USA. In fact, I’ve already got most of it done!

  78. 4

    Any ideas, asks IANAE. I have some.

    Courts will use whatever tools are available to them, to get to the “right” result. In the UK we used to have (Section 32 of the 1949 Act) about 15 grounds of invalidity, of which grounds a, b and j were relevant to issues of inventorship. Now, under the EPC, all we need are the five of Art 138(1), namely, a) unpatentable over the art, b) disclosure insufficient, c) subject matter added during prosecution, d) scope extended after issue, and “ground e”.

    Ground e is that the patent proprietor is not in fact entitled to the right to the patent. That takes care of (inter alia) any defect in the inventorship entity.

    In short, despite all the rationalising and downsizing, Europe in 1973 still thought it necessary to spell out unambiguously and explicitly that stolen rights are invalid rights.

    By contrast, the AIA is what it is because of history. That old joke about the lost motorist asking a country bumpkin for directions is relevant here. You will recall the answer that it would of course be better if he were not starting from this particular location. Europe had the advantage that its 1973 European Patent Convention was written from scratch, with no earlier writings on the plain white page. So things could be kept nice and simple.

  79. 3

    Dennis As such, it is unlikely (in my view) that MadStat is correct in its argument that Section 102(f) was the only provision guaranteeing continuation of that link.

    Congrats on taking a stand.

    Double congrats on getting it right.

  80. 2

    I was waiting for somebody to bring this up.

    Like I said on the “Kappos/101” thread, the concepts described in 101 MUST be given effect. One way that can be accomplished would be to import the 101 concepts into the 102/103/112 “conditions or requirements”. Such an undertaking would be required under the Hricik approach as I understand it, but would be unwieldy and likely to lead to (further) convolution.

    Of course, that approach does not address the situation where a concept in 101 finds no good locus for importation into 102, 103, or 112.

    It is clear as day to me that the concepts articulated in 101 can be used as defenses. The only thing in 282 that would suggest otherwise would be the “specified as conditions under this title” language, and the mention of requirements only in 112.

    Both those things are easily dispensed-with if 282 is NOT considered the exclusive source of defenses. In terms of statutory interpretation, THAT is where the real action lies, and when at first glance no exclusivity language appears in 282, it is apparent that an argument can be made that 282 is not, in fact, the exclusive source of defenses.

    It is as easy as that, combined with evidence that something like inventorship appears in only 101 but finds nowhere else in 35 USC for importation.

    JV? Ned? Did you guys read my latest post on the other thread?

  81. 1

    The 102(f)/103 scenario occurs when an applicant learns of an invention created by someone else and then comes-up with an obvious variant of that invention.

    Surely it’s not even an “invention” if it’s an obvious variation of something that was already known. There’s a reason some jurisdictions use the term “inventiveness” as an antonym to “obviousness”.

    “Oh, sure, you invented the iPod, but I invented painting it blue.” Sorry, but the second person isn’t “whoever invents” by any interpretation that makes any sense to me.

    Thus, the AIA’s deletion of the redundant requirement in 35 U.S.C. § 102(f) is irrelevant, as section 101 will continue to require that a patent only be awarded to an inventor.

    Yes, today we interpret 101 to require inventorship because we need the law to have an inventorship provision. I think that interpretation is correct – and even if it wasn’t, the Supreme Court would read it that way anyway.

    Now, what did the “redundant” requirement of 102(f) add to the law when it was there? Statutes aren’t supposed to be redundant. What did it add, and therefore what was removed? I don’t think it’s the 102(f)/103 thing. Any ideas?

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