When Co-Inventors Fail to Cooperate – Nobody Gets a Patent

by Dennis Crouch

In re VerHoef (Fed. Cir. 2018) is a sad tale of a failed partnership that doomed the patent rights.  The tale may be useful for anyone representing co-inventors involved in a start-up.  At a minimum, a corporate entity should have been created at the get-go to hold the patent rights and mitigate later breakdowns in the partnership. Notice the drawing below – even the dog looks sad.

= = = =

For patent applications filed prior to the America Invents Act implementation, the Patent Act included an express requirement that the patent applicant be the inventor.

A person shall be entitled to a patent unless - (f) he did not himself invent the subject matter sought to be patented.  35 U.S.C. 102(f) (pre-AIA)

The named in inventor in this case – Jeff VerHoef – received some help from a veterinarian Dr. Lamb. In particular, VerHoef first designed and built his prototype harness designed to provide ‘knuckling’ therapy for his dog.  Later, during a therapy session with Dr. Lamb, she suggested he consider a “figure 8” strap around the dog’s toes.  VorHoef implemented the idea then filed for patent protection — naming both himself and Dr. Lamb as co-inventors. 

Several months later, relations between VerHoef and Lamb broke-down; their original application was abandoned; and each filed their own separate patent applications. Both applications were filed on December 16, 2011 and are identical except for the names of the listed inventors.

Compare Pub. No. 20130152873 (VerHoef - at issue here) with Pub No. 20130152870 (Lamb - now abandoned).

VerHoef’s examiner examiner uncovered the parallel Lamb Application and subsequently rejected the claims under Section 102(f) — alleging that Lamb’s application provides evidence that “applicant did not invent the claimed subject matter.”  The PTAB affirmed that ruling and on appeal here the Federal Circuit has also affirmed.

For joint-inventorship, the baseline principles revolve around “conception.” Individuals who conceive of features that lead to the whole invention are generally thought of as proper joint-inventors.  However, the exact penumbra of what counts as sufficient contribution is at times difficult to exactly discern. Some cases suggest “every feature” while others require “significant contribution” as compared with the invention as a whole.  Here the court did not need to parse-out the exact limits. Rather, VerHoef admitted that the figure-eight design (1) was contributed by Lamb and (2) is an “essential feature” of the invention.

VerHoef argued that he is the sole-inventor since he “maintained intellectual domination and control over the work” at all times and since Lamb “freely volunteered” the idea of the figure eight loop during a therapy session. (“Lamb’s “naked idea was emancipated when she freely gave it to VerHoef.”)

The domination legal theory here from an  old patent board decision, Morse v. Porter, 155 U.S.P.Q. 280 (B.P.A.I. 1965).  In Porter, the Board wrote that if an inventor “maintains intellectual domination of the work of making the invention . . . he does not lose his quality as inventor by reason of having received a suggestion or material from another even if such suggestion proves to be the key that unlocks his problem.”  Porter is cited by the Patent Office MPEP inventorship section as the basis for the following heading:

AS LONG AS THE INVENTOR MAINTAINS INTELLECTUAL DOMINATION OVER MAKING THE INVENTION, IDEAS, SUGGESTIONS, AND MATERIALS MAY BE ADOPTED FROM OTHERS.  M.P.E.P. 2137.01

Of course, the MPEP is not the law and carries zero weight with the Federal Circuit.  I’ll also note here that the USPTO made no attempt to explain or justify this section of the MPEP in this case.

On appeal, the Federal Circuit refused to adopt or endorse the Porter “intellectual domination” theory or any other “emancipation” theory — finding that Federal Circuit case law already sets out the conception requirements for inventorship.  As such, the refusal-to-patent under § 102(f) was affirmed. See PerSeptive Biosystems, Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315 (Fed. Cir. 2000)(“Examiners are required to reject applications under 35 U.S.C. § 102(f) on the basis of improper inventorship”).

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, as those materials establish that Lamb was a joint inventor improperly omitted from the application. We therefore conclude that the Board properly sustained the examiner’s rejection of the claims under § 102(f).

The situation here is obviously a business failure. The pair had an interesting idea, but because they could-not cooperate neither get the patent.  It is hard for me to believe that the attorneys for VerHoef and Lamb were willing to pursue this approach.

= = = =

Post AIA Inventorship Challenge: As indicated above, the America Invents Act eliminated Section 102(f).  However, the law retains a requirement that all inventors be identified in patent applications.

35 U.S.C. 115(a): An application for patent ... shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

35 U.S.C. 116(a): Joint Inventions — When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title.

The new law also provides a mechanism for correcting an inventorship error as well as a derivation procedure.  But, the law no longer directly states that failure to list proper inventorship results in an application being unpatentable or a patent being invalid.  Arguably, the requirement might also be subsumed within § 101’s requirement of “invention or discovery.”   The USPTO has explained its position in the MPEP Section 2157 that a pending application with improper inventors can be rejected under Section 101/115:

MPEP 2157: Although the AIA eliminated pre-AIA 35 U.S.C. 102(f), the patent laws still require the naming of the actual inventor or joint inventors of the claimed subject matter. . . . In the rare situation where it clear that the application does not name the correct inventorship and the applicant has not filed a request to correct inventorship under 37 CFR 1.48, Office personnel should reject the claims under 35 U.S.C. 101 and 35 U.S.C. 115.

Once issued, Section 101 would still be available, but is questionable in my view (recognizing Congressional elimination of 102(f) should be given effect). An alternative would be to hold such patents unenforceable due to inequitable conduct (if intent is proven) or perhaps to simply refuse to give third-parties the opportunity to collaterally challenge patents based upon improper listing of inventors.

88 thoughts on “When Co-Inventors Fail to Cooperate – Nobody Gets a Patent

  1. 11

    ” I guess I cannot see what the fuss is that the U.S. lacks patent “rights” in this sense, if it has gotten by without them so far and has still enjoyed all of the benefits of accelerated innovation that patents are meant to foster.”

    This says it all.

    I don’t need an answer because we likely disagree, but here a few things to ponder.

    Does your life belong to you?

    Why do you choose to live in a society.. does it serve your interest?

    If you choose to live in a society why do you need a government, any government?

    What is a proper government, what is its role, and what is its proper relation to you?

    Do you require recognition from that government of your life liberty ownership etc.? Does government serve to protect your freedoms from initiation of force by others (criminals, fraudsters, foreign powers)?

    Do your requirements from government for liberty, life , ownership exist to serve others? Is your claim to the necessity and propriety of these things for a harmonious society in which you will participate something you claim by right or something dictated by others you simply “go along with” ?

    Who owns your rights to life, liberty and the product of your labor?

    Does your life belong to you?

    1. 11.1

      Ack! I meant to post this at the VERY bottom in reply to Greg. Sorry for this!

      1. 11.1.1

        No need for apologies – this is fine here.

        Further, this reflects an ongoing conversation that the late Ned Heller and I were having vis a vis the source of Rights and the place of the government in relation to inalienable Rights.

        He was of a view that “Might” makes the Right, that the State is Supreme and Rights only exist within the realm as provided by the State. He was ever putting the cart of the State before the horse of the individual and one’s inalienable rights.

        For all of his views (and attempted championing) of patents as property, his larger contextual views were – and remained – somewhat fundamentally flawed.

    2. 11.2

      I don’t need an answer because we likely disagree…

      Well, of course, neither of us needs an answer to any of these questions. One discusses such things because one finds it diverting and stimulating to discuss such things. There is no compulsion or necessity on either side.

      … but here a few things to ponder. Does your life belong to you?

      Er, well, you don’t half wish to start big, do you? You asked a direct question, so I will give a direct answer. No, my life does not belong to me.

      That said, I wonder if it really is necessary to have a consensus answer to that question in order to operate an intellectual property system. My answer in the negative derives from the Roman Catholic presuppositions I bring to philosophical inquiries. I cannot prove that an individual’s life does not belong to the individual, any more than someone else can prove that an individual’s life does belong to the individual. I expect that quite a few secularists would give a very different answer to that question than I do, and yet they and I can—while disagreeing fundamentally on this question—still agree about the why and how of the operation of the U.S. patent system.

      If you think that consensus on that series of deep questions is a necessary precondition to agreement about IP, then you are surely correct that there is no further basis for discussion about the IP questions. That said, color me skeptical that such a deep consensus really is necessary as a precondition to discussing IP questions.

      1. 11.2.1

        No, my life does not belong to me.

        …My answer in the negative derives from the Roman Catholic presuppositions I bring to philosophical inquiries.

        You better check again, as your life very much belongs to you under Roman Catholic presuppositions.

  2. 10

    OK, Took a peek at the Image File Wrapper for the Other side, and… for that part, a reply to the FAOM contains the following:

    As an initial matter, Applicant wishes to alert the Examiner to the existence of U.S. Application No. 13/328,683 entitled “Dog Mobility Device” filed in the names of Alicia Lamb, which application appears to be a near identical copy of the present application. Applicant disputes Alicia Lamb’s contention that she is the sole inventor of the subject matter disclosed and claimed in the present invention. On the contrary, Applicant believes himself to be the sole, original and first inventor of the subject matter disclosed and claimed in the present invention.

    Interesting “history” here in that in a reply further down the line of prosecution contains a declaration that contains both the statement (point 8) (emphasis added): “I formed in my mind a definite and permanent idea of a complete and operative dog mobility device that comprised…” THEN admits to making a comment to Lamb, THEN admits to receiving the Lamb suggestion.

    Plus point 16 – an offer of co-inventor appears to be being spun as a furtherance dependent offer and decline of that offer. Curiously though that in the face of the declined offer, that continued sharing (including application and professional drawings) with Lamb continued….

    Point 20 – counter offer, and acceptance…

    Point 21 – “which was reasonable” (she said) followed by “share the costs” – at that time DID consider Lamb was co-inventor and DID state so to his attorney (prior to the filing of the first co-inventor listed application).

    Interactions up to Point 28 (filing) are all consistent with a mutual belief of co-inventorship. (10/14/11) filing date.

    Point 32 – where the “S” hit the fan (the spin here is that Lamb welched – the first co-inventor already putting a second on his house, the wealthy doctor not wanting to part with cash).

    Point 40 – Attorney is seemingly “blamed” for the “Dominion” theory (after the business venture exploration had already crashed)

    Points 41-42 – express abandonment of the filed application. (thus – no can find this in PAIR)

    Bizarrely, the Public PAIR record itself has been redacted (without notice) and a portion of the first attempted reply to a second non-final (3/25/2014) and the second non-final itself (11/27/2013) do not download with the rest of the Image File Wrapper (even though hyperlinks are provided for both, as contrasted with some NPL, to which hyperlinks are NOT provided) – the different treatment smacks of impropriety, for if the material were to be “rightfully” kept from disclosure, the methodology applied to the NPL should have been used, and there is no reason provided for the public record of a rejection and response of a published application should be kept from view – no court ordered suppression or the like.

    1. 10.1

      Good sleuthing anon. A lot of inventors are getting abused because of the bureaucracy or poor representation, whichever you want to call it. Lawyers really like the bureaucracy because creates a lot of churn and confuses the client on why they don’t have a valid enforceable patents in spite of tens or hundreds of thousands of dollars. Most of us end up with a Stockholm syndrome, thinking it must be something we did. I’m learning about dozens of inventors like Mr. VerHoef. They have inventions but no rights.

      1. 10.1.1

        I’m curious as to the “missing” public information of that second non-final and part of the reply to that second non-final.

        I “lost” a comment below (system indicates that I “submitted twice” even though neither show up here, but the comment was in reply to Examiner exer, noting that the original application listing both as co-inventors was expressly abandoned and having been expressly abandoned prior to publication, such should be as having never existed. Thus, there would be no “thing” there TO find (and that’s aside from the point that I added about the Office apparent dereliction of duty in searching the known pre-published possible of prior art.

        1. 10.1.1.1

          Hey 6 and exer (and any other examiners or examiner types), what’s up with the redactions in the public record? Did the examiner in this case venture into some “protected privacy” area? Was such venturing something that should not have been allowed given the express abandonment of the first “co-inventor” application?

          1. 10.1.1.1.1

            .,.boys? any insights on the apparent irregularities of the public record?

      2. 10.1.2

        cr@ ppy lawyers really like the bureaucracy because creates a lot of churn and confuses the client

        Fixed for accuracy. None of the patent attorneys I work with like “the bureaucracy”. We’d all rather do substantive work, then go home and play.

        And it’s predictably hilarious to hear a participant in the patent system complain about “bureaucracy” in the first place. If you don’t like “bureaucracy”, then don’t ask the Federal government for a handout that you don’t need.

        1. 10.1.2.1

          Completely agree with your first paragraph.

          Completely disagree with your third paragraph.

          The cognitive dissonance of you being a patent attorney with such utter disdain for the work product you (supposedly) produce is beyond compare.

          Here you want to blame the applicant for their deigning to obtain patent rights and tell them that by pursuing their rights they should “just deal” with (their view: unnecessary) bureaucracy. How do you have any clients?

  3. 9

    I took a peek to see if either had claimed priority to the first “joint” application, and neither did.

    But from the Image File Wrapper of the spurned Lamb application comes this from the response to the First Action On the Merits (emphasis in original):

    I. Notification of Pending Application 13/273,951

    The Applicant wishes to bring to the Examiner’s attention co-pending U.S. Application No. 13/273,9511 (the ‘951 Application) that is believed to be identical to the present application. In particular, the claims in the present application were copied directly from the ‘951 Application. On information and belief, the inventor in the present application, Alicia Lamb (“Lamb”), was originally named as a co-inventor on the ‘951 Application with Jeff VerHoef, but was later removed as an inventor, without her consent.

    Lamb believes that she is the sole inventor of the subject matter disclosed and claimed in the present application and in the ‘951 Application. The present application was filed with the intention of provoking an interference with the ‘951 Application. The undersigned apologizes for not notifying the Examiner of the ‘951 Application earlier.

    1. 9.1

      Thanks, that confirms that at least Lamb’s attorney was meeting Rule 56 disclosure duties here [which is undoubtedly how “VerHoef’s examiner examiner uncovered the parallel Lamb Application”], and Lamb did request an interference here.

      1. 9.1.1

        Another way that the examiner may have uncovered the “identical” application, is by using a “home run” search.

        Often my first search is a very narrow search using many terms from the claims just to see if there is something super close to my application. Usually it turns up only the application I’m examining. But if it turns up something else, it shortcuts a lot of searching because I’ve found a bang-on reference.

        Another way would have been by using an inventor search. Those are required by examiners, too.

        So it’s not “undoubtedly” why the examiner found the reference. We’re not “all” entirely incompetent.

        1. 9.1.1.1

          Thanks. My experience to the contrary was simply based on the observation that in the years following the ending of formal application searches for interfering pending applications [long ago] few application vs. application interferences were declared. That is, almost all interferences were [and still are] between issued patents and applications. Unless a foreign equivalent publication was noted claiming priority from an un-issued U.S. parent application. Of course now we also have U.S. application publications at 18 months.

          1. 9.1.1.1.1

            in the years following the ending of formal application searches for interfering pending applications [long ago] few application vs. application interferences were declared.

            …having never received a cogent basis for a reply), I will ask again: under what authority could the Office on its own stop searching KNOWN potential (even if “secret”) source of prior art?

            1. 9.1.1.1.1.1

              “under what authority could the Office on its own stop searching KNOWN potential (even if “secret”) source of prior art?”

              Probably when it became unwieldy to actually do. It’s one thing to look around the AU and see if anyone has an app that looks like the one under consideration back in 1940, it’s another to have 2000000 apps pending that would need to be reviewed across a whole TC in 2018. There is no infrastructure for it to be done now and they likely used their inherent authority to deem that it wasn’t worth including in every search. Contrary to your belief, the office has a whole sht ton of authority to determine HOW the examination is carried out.

              1. 9.1.1.1.1.1.1

                That’s just it, 6 – with the switch-over to electronics (not to mention the current state of drawing match software – which is actually a bit besides the point, given as the main thrust here is examining pre-publication applications that MAY mature into prior art, and for which are captured in your systems as much as published applications), there is no such “unwieldy” excuse.

                Further, there is no excuse of “our jobs should be easier” – which is one of the traps of “improving” examination wherein the thrust switches from actual bettering of examination to one of ease (regardless of the Ends).

                As to “ Contrary to your belief, the office has a whole sht ton of authority to determine HOW the examination is carried out.” that’s a strawman, as I have never stated that the Office does not have a “whole sht ton of authority to determine HOW the examination is carried out” – but purposefully choosing to IGN0RE a whole swath of potential prior art (that which IS prior, just not yet published), makes NO cogent sense.

                Yours is exactly the type of prior response that I have seen to my question – and exactly the type of response that does not fly.

                1. “That’s just it, 6 – with the switch-over to electronics (not to mention the current state of drawing match software – which is actually a bit besides the point, given as the main thrust here is examining pre-publication applications that MAY mature into prior art, and for which are captured in your systems as much as published applications), there is no such “unwieldy” excuse.”

                  What you’re suggesting would cost $$$, and require actual on the ground ABILITY. They obviously determined not to bother with those $$$. And their ability as agency heads is hmmmm, questionable at best? Better than say maybe Kenya’s bureaucrats, but not as good as the perfect space-empire bureaucracy you’re dreaming of. Currently the EAST system is separate from the depts where they scan in apps/receive e-apps. They’re making a new EAST now, but by the time they get it done (when I’m retired probably, or dead) interferences will be so long dead nobody cares.

                  “such “unwieldy” excuse.”

                  “Further, there is no excuse of”.

                  They don’t need an excuse reta rd. It’s wholly in their subjective and to an extent objective (here $$$ count) determination about what will best serve examination. Their authority trumps nigh all when it comes to HOW. They’re accountable only to Donny T/cabinet, not you.

                  “but purposefully choosing to IGN0RE a whole swath of potential prior art (that which IS prior, just not yet published), makes NO cogent sense.”

                  It obviously does to them, $$$ son. Further I think it might be helpful to know that I, and every other examiner purposefully ignores a whole swath of potential prior art for every single application (all the art in the world we don’t look at in the search herp derp). Truth is, though you don’t like it, and don’t like to acknowledge it, the office has only bargained with the union for a rock bottom bare minimum search that is designed to look for the best prior art, in the US patent art and that’s about it.

                  “Yours is exactly the type of prior response that I have seen to my question – and exactly the type of response that does not fly.”

                  It doesn’t fly by you ta rd, it does fly by the people in charge, in the real world.

                2. …having never received a cogent basis for a reply

                  Still haven’t.

                  6 – that is just not a cogent basis. Under your “reasoning,” the Office would be perfectly in accord with the law if it stated, “IBM applications will be granted without any examination, because they have so many, it would be easier to just grant them, savings us lots of $$$.”

                3. ” Under your “reasoning,” the Office would be perfectly in accord with the law if it stated, “IBM applications will be granted without any examination, because they have so many, it would be easier to just grant them, savings us lots of $$$.””

                  Um no, 1.a. “a search” is required by reg upon decision of the office back in the day, and 1.b. an “examination” as required by lawl arguably requires some sort of search be done.

                  2. IBM is but one company and treating them differently than everyone else would lead to massive APA violations whereby everyone else could file suit to have their determinations of unpatentability set aside. (in other words if the office decides to not conduct a search to fulfill “an examination” requirement under the law, and changes it’s rules thusly then it must carry out no search for anyone, or at least they’d have to pass arbitrary and capricious standard to carry out a search for whichever people they did one for).

                4. But THAT is not “your logic.”

                  Look again at how you propose that the Office could do what they want – there is NO limitation in YOUR logic as to the distinctions that you now want to add.

                5. “But THAT is not “your logic.””

                  Um it certainly is part of “my” herp derp “logic” re re. Keep in mind this isn’t merely “6’s logic” I have no doubt that this is “the federal gubmit’s official position since before I was hired”. I’m just breaking the bad news to you personally, and you don’t like the news. If you need official confirmation, submit a request for comment to the solicitor’s office, or ask a higher up at an event, they’re just going to tell you “um, I guess that’s what the director/commissioner decided to do because he has that powa”. And you can feel free to cry about it and submit a petition to donny T on We the People (lol I can’t wait to see the 1 signature).

                  “Look again at how you propose that the Office could do what they want – there is NO limitation in YOUR logic as to the distinctions that you now want to add.”

                  Sure there are, there are limitations under the lawl, they just aren’t very stringent like you want them to be, they are very loose. I just didn’t go into them at first. Because I figured there was no need to go into all those little nooks because I presumed I wasn’t talking to a ta rd (a mistake I make a lot when talking to you).

                6. “herp derp”

                  You lose me with your lingo.

                  There remains no cogent reasoning. All your position comes down to is “the Office decided” which is no reasoning at all.

                  There is NO “out” provided by the law for the Office to do as they are doing. The current version of the MPEP (shared by Paul) reflects a taking away of the avenue of interferences – but that taking away of that avenue did NOT provide that a first filed item (even as it may be unpublished***) is somehow “excused” from consideration – as a provisional consideration, see post at May 5, 2018 at 3:11 pm in reply to Paul’s post at 9.1.1.2.1.2.3.

                  In fact, with the AIA, there is even MORE impetus (and even more simplicity) to take into account the pre-filed-but-not-yet-published art: there is no more swearing behind.

                  Your “$$$ and ease” position does not float. Your “powa” is not a cogent reply.

                  *** Note that the time period of non-publication may vary from the statutory “18 month” to an applicant “publish ASAP,” to even an applicant “don’t publish until grant.” In each and every of these non-publication avenues, there is NO “don’t include” provision in the law for the Executive branch to NOT execute the “First Inventor to File” law (or as you may put it: lawl). The law passed by Congress is NOT a First to Publish, and multiple patents may issue for combined First to File and First to Publish regime. ALL those application that are filed merit consideration as prior art to all those applications that are later filed, even if that consideration is merely a provisional one, and the earlier filed application is abandoned before publication and thus becomes an item as if that item never existed.

                  All the “powa” of the Executive does not include the ability to make up the law or execute only the law that it decides that it wants to execute (for “ease” or “$$$” or whatever). That’s just NOT a “how to execute” type of thing – so your strawman does not reach.

                  Once you wrap your head around that, maybe you can take a peak at what’s going on in my posts at 10, 10.1.1 and 10.1.1.1. What has been expunged from public view? And why in the manner that it has been?

                7. You’re ret arded. That’s all I have to say further except offering you that I do believe it was discussed whether they would try to add in e-filed applications/scanned apps that had been classified into the new search tool they’re making. But I don’t recall if they ever decided one way or other and so they’ll probably leave it out. If you’re that upset about it, then file a lawlsuit to try to force them to examinate your patent the way you want them to. When a court tosses your lolsuit be sure to post the results here so we can all lol@u.

                8. except offering you that I do believe it was discussed whether they would try to add in e-filed applications/scanned apps that had been classified into the new search tool they’re making.

                  Why should that matter?

                  Under the AIA, all matter filed that may eventually be published is fair game and needs to be included in your efforts.

                  Otherwise – for example – one may file an application in a fast moving (that is, technology is progressing quickly) field under a non-publication request, be engaged in examination for up to 5-6 years (a somewhat random number), and have some other “fast track” application be submitted 3 years or so after the first application, be granted (let’s say by a different examiner in a differently assigned art unit – stranger things happen), and be out and published for years, AND THEN BE nullified under the First Inventor to File regime when the first filed application finally reaches grant and is published as a patent.

                  It really is NOT an option to close your eyes and pretend that prior art is not already in your hands at the patent office. You do not even really need to go out and search elsewhere for this type of prior art.

                  If you’re that upset about it, then file a lawlsuit to try to force them to examinate your patent the way you want them to.

                  …because I should sue the government to do the Fn job right….? And you call me ret arded…?

              2. 9.1.1.1.1.1.2

                …having never received a cogent basis for a reply”

                Still haven’t.

                And it looks like I won’t.

                Again.

                Maybe next time…

        2. 9.1.1.2

          As the record shows (above), the examiner was directly informed by the applicant.

          1. 9.1.1.2.1

            Thanks for confirming that this application-application conflict was [as noted, typically] NOT uncovered by the examiner.
            As for those long-PTO-eliminated interference searches [dubiously assuming you are actually interested] they were searches for interfering co-pending unpublished (and never going to be published in those days) applications, which of course are NOT prior art. They were only potentially prior art, only if and when finally issued as patents, or, by publication of a foreign equivalent, and had earlier filing dates, and were not sworn behind.
            Life under the AIA is a lot simpler.

            1. 9.1.1.2.1.1

              [dubiously assuming you are actually interested] they were searches for interfering co-pending unpublished (and never going to be published in those days) applications, which of course are NOT prior art.

              Nothing at all “dubious” about it, Paul. This is NOT a new position for me. As to “and never going to be published in those days) is simply not true. IF they matured, THEN they would in fact be published – as you subsequently note, alas – with more clarity:

              They were only potentially prior art, only if and when finally issued as patents, or, by publication of a foreign equivalent, and had earlier filing dates, and were not sworn behind.

              Yes – they WERE prior art, but prior art only for a conditional rejection, of which, as you properly note, some actual “bringing into the public” had to happen.

              As I stated, the expressly rejected application, rejected prior to publication is as if such never existed.

            2. 9.1.1.2.1.2

              “long-PTO-eliminated interference searches”

              Last century, before electronic file wrappers, the drawings in an application were photocopied when arriving in a group (now, technology center). The drawings went into a file cabinet, organized by art unit. When an application was determined to be ready for allowance, the examiner was supposed to go to the file cabinet(s) and inspect each drawing in all the art units that might reasonably be expected to having possibly interfering subject matter. Of course, there might also be art units in other groups that could potentially have interfering subject matter, calling for a trek to the other group(s). If the same or similar drawings were found, the examiner was to retrieve the potentially interfering application(s) (from central files or a clerk’s or another examiner’s desk) and determine if interfering subject matter existed. If it did, the examiner was to generate one or more counts and forward the applications to the Board, where it was determined if an interference should be declared.

              That process was a tremendous waste of examining time; if done properly, it could take up all the hours allotted for examination of an application, with very few actual interferences found. In view of the law of diminishing returns, supervisors instructed examiners to do an interference search on their first application to see how it should be done, then forget it. It became known as the Office’s “dirty little secret” that examiners recorded interference searches on the file wrappers without going through the file cabinet(s).

              In the 1990’s a no-nonsense group director, on his way to retirement, was given deputy commissioner status. That person sent the (paper!) memo that interference searches would cease. If an examiner was aware of interfering applications at the time of allowance, the examiner was instructed to prepare the files for interference and forward them to the Board. And so it became.

              1. 9.1.1.2.1.2.1

                Unlawful as all get out….

                Would LOVE to see that “paper” memo!

              2. 9.1.1.2.1.2.2

                Yup

              3. 9.1.1.2.1.2.3

                [P.S. My ‘yup’ was fully agreeing with the S. Morse description above of the former PTO interference searches, their neglect and realistic demise.
                Not with Anon’s assertions of illegality, or of giving provisional rejections of applications based on unpublished applications of others, since, of course, that would violate their secrecy

                1. The “provisional” aspect was what preserved their secrecy, Paul.

                  But let’s pretend that what went on (even painstakingly so, per S), did not actually happen….

                2. We have a written historical record. The interference search is described in MPEP section 1302.08. Normally, instructions to the examining corp are incorporated into the next revision of the MPEP. But according to the archived MPEP files on the USPTO website, the drawing-to-drawing search was not officially replaced until August 2006, MPEP 8th Ed., Rev. 5. The replacement, still in effect, instructs examiners to word-search the published application database “directed to the comprehensive inventive features in the broadest claim.” Doesn’t sound too bad, unless you actually find possibly interfering subject matter. I wouldn’t mind hearing from an examiner as to whether the current procedure is practical and is followed.

                3. “I wouldn’t mind hearing from an examiner as to whether the current procedure is practical and is followed.”

                  It usually takes 5 minutes, sometimes 30, or if I happen to find a lot of art in that little word search of the claims then I might just go ahead and look through it all and it might take a bit, but rarely. Usually you just tighten up the word search a bit as you’re only looking for something that might interfere, which has to be pretty darn close.

                4. I see that we have become a bit distracted here with a overly focus of “interference search.”

                  The thrust that I bring up is not so limited. The thrust I bring up is all of the pre-publication (yet filed) stuff for all of its (potential) prior art effects.

                  And no, the AIA does NOT help you here (unless of course, you actually use all of that pre-pub material IN your search).

                5. The MPEP provision is “706.02(f)(2) Provisional Rejections Under 35 U.S.C. 102(a)(2) or Pre-AIA 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application [R-08.2017]” But it has no realistic suggestion as to how such a mere possible future actual “rejection” can be maintained [other than by an interference], using a pre-AIA unpublished application that cannot be disclosed, when the subject application under examination is otherwise ready to issue?

                6. btw, the MPEP that you point out Paul is wrong, as the law (35 USC 102(d)), provide NO “out” as the Office writes in its “guidance.”

                  Please tell me that you recognize that the MPEP not only has been wrong when it comes to the law, it has been wrong in a number of instances – and remains wring in a number more.

                7. Paul,

                  After conversing with 6 above, I am curious as to your read of the existing MPEP marching orders in the example that I gave to 6 today….

                  Otherwise – for example – one may file an application in a fast moving (that is, technology is progressing quickly) field under a non-publication request, be engaged in examination for up to 5-6 years (a somewhat random number), and have some other “fast track” application be submitted 3 years or so after the first application, be granted (let’s say by a different examiner in a differently assigned art unit – stranger things happen), and be out and published for years,…

                  In your view, what happens under such a situation? Let’s add in that no chicanery has taken place (the second inventor is not a “deriver,” having actually invented the same thing some three years after the first had actually filed.

                  Do you allow TWO patents on the same thing?

                  Do you enforce a provisional rejection on the second application during examination of that second application?

                  Do you call up the owner of the second-filed-but-first-granted patent and feebly offer that a first-filed-but-finally-granted-and-published patent eradicates that second patent owner’s expectation interests?

        3. 9.1.1.3

          …but here in this situation, the express abandonment might lend some havoc – as an item abandoned prior to publication is as if such never existed.

          I wonder if the “monkey business” with the suppression of the public record (as I indicate above with the second non-final and a portion of the reply to that second non-final apparently being cen s0red from view…

      2. 9.1.2

        Not directly questioning Lamb’s attorney (albeit, there is and should be SOME questioning of that person), but how in the world is Lamb even close to behaving equitably in trying to claim the entire invention for herself?

        Did not the attorney first filing “her” application cannot help but notice that it was a most all direct copy of someone else’s work product?

        If one throw out the (pretty much only viable ethical) path of trying to provoke an interference, one is left with the fact that Lamb is KNOWINGLY making a false sworn statement to the Federal Government (at least the other guy has a legal argument to make about being “the SOLE” inventor – Lamb has absolutely NO argument for that “SOLE” status, and further her attorney should have recognized this – if not at the time of filing, then definitely by the time that Paul here wants to “recognize/reward” the attorney for complying with ethical duties…

        I have to think that more is required, even if Lamb has but a remote (and conversely, a solid) argument for being a CO-inventor, she has zero position for being a SOLE inventor, as sworn.

  4. 8

    As for the speculations if these had been AIA applications, they would still have this 35 USC 115 requirement:
    “(a) Naming the Inventor; Inventor’s Oath or Declaration- An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
    (b) Required Statements- An oath or declaration under subsection (a) shall contain statements that–
    (1) the application was made or was authorized to be made by the affiant or declarant; and
    (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.”

    This leads to a question: Does filing a false inventorship oath require proving that it was inequitable conduct in order to render the patent unenforcable?

    1. 8.1

      You don’t file an oath for the other inventor. If an inventor is unavailable/uncooperative, you file a substitute statement. Keep reading through section (d).

      1. 8.1.1

        Yes, but that does not avoid the requirement for every inventor who DOES sign to swear that “such individual believes himself or herself to be THE original inventor OR an original JOINT inventor of a claimed invention in the application.”

        1. 8.1.1.1

          You’ve been away from prosecution far too long.

    2. 8.2

      Further, one of the (odd?) changes was an extensive removal of references to “and without deceptive intent” – obstinately to remove the type of gambit that you are referencing (a kind of no-fault correction, 180 from the former draconian penalties).

  5. 7

    With identical claims in two pre-AIA applications by different named inventors why didn’t the examiner who found that promptly propose an interference? Determining disputed inventorship is not normally or appropriately done ex parte in the examining corps. The Board has APJ experts for that.

    1. 7.1

      “With identical claims in two pre-AIA applications by different named inventors why didn’t the examiner who found that promptly propose an interference?”

      Because allowable claims need to be present before applications are submitted for interference — to avoid a potential waste of time and resources. In this case, based on the information before the examiner, the claims in both applications were barred under section 102(f).

      1. 7.1.1

        Yes, but this is a highly abnormal situation, in which the named inventor himself made sufficient admissions of record to be used against him. As the IPO summarized it, “The Court finding that VerHoef’s affidavit supported the USPTO’s determination that another person contributed an idea that was “an essential feature of the invention not insignificant in quality or well-known in the art” that established joint inventorship, a proper reason for rejection under section 102(f).”

    2. 7.2

      An interference is a priority contest. The way the federal circuit laid out the facts, the underlying problem is not a question of who was the first inventor.

      1. 7.2.1

        … as noted above, the underlying record indicates that the clash was a deliberate attempt to provoke an interference (“claims copied” and all).

  6. 6

    Notice the drawing below – even the dog looks sad.

    That’s cuz his paw is messed up.

  7. 5

    “Several months later, relations between VerHoef and Lamb broke-down; their original application was abandoned”

    Wow super dumb move. Couldn’t even cooperate enough to get the patent finished up and then settle the rights after? Whew. Wonder if there was a lurve story behind this.

  8. 4

    In case this helps Mr. VerHoef, it is evident to me (and presumably to a person of ordinary skill in the art) from reading his application that he had possession of an invention including embodiments with as well as without a figure eight loop. While the figure eight loop is one embodiment, it is quite clear that there are other structures for attaching the harness to the paw – a sleeve, a band, a separate loop around the toe joined to a separate loop around the heel, a loop only around the toe. Accordingly, he should file a claim for the genus of dog mobility devices that attach to a dog’s paw, which from the record was conceived prior to involvement by Dr. Lamb.

    I’ve also looked at the Tee prior art. It would not attach to a dog’s paw. The loop is too big and requires the human user to consciously position it in the cradle of their human foot. A dog could not be expected to cooperate to achieve this intended use with the Tee structure. Not to mention Tee does not disclose a “dog harness”.

    Accordingly, a broader claim solely invented by Mr. VerHoef, might be allowable in an RCE:

    A dog mobility device for assisting with a forward movement of a hind leg of a dog and with an upward movement of the dog’s toes, the dog mobility device comprising:

    at least one elastic cord connectable to a dog harness, wherein the at least one elastic cord includes an upper forward end portion and a lower rearward end portion; and

    a paw loop connectable to the lower rearward end portion of the elastic cord, wherein the paw loop is configured to engage one of the dog’s paws such that an upward tension is imparted to said paw.

    1. 4.1

      See:

      ” Rather, VerHoef admitted that the figure-eight design (1) was contributed by Lamb and (2) is an “essential feature” of the invention.”

      1. 4.1.1

        So, legal malpractice?

    2. 4.2

      And a strap – velcro, clinching, buckling. That is another embodiment. Several species of paw attachments are immediately evident when reading his disclosure.

      1. 4.2.1

        I just ctrl+f’ed the patent:

        Velcro: 0 instances
        clinch: 0 instances
        buckl: 0 instances
        sleeve: 0 instances
        band: 0 instances

        “Not to mention Tee does not disclose a “dog harness”.”

        Yes, but neither does his claim nor your suggested claim.

    3. 4.3

      Yeah, ditto what 6 says here. I salute you for trying to rescue something out of this for Mr. VerHoef, but once one admits on the record that something is an “essential element,” one will run into enablement issues if one tries to take it out of the claim. This is true even if the limitation is not necessary to distinguish over the art. Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998).

      1. 4.3.1

        It is essential to the claim at issue. Why would it be essential to an invention that “applies upward tension to the paw” using a different structure? It couldn’t be.

        1. 4.3.1.1

          Because the inventor’s dumbarse thinks that it is. And because in the real world the other embodiments probably didn’t work out (or didn’t work out all that well). If I had to guess, the inventor was probably trying to use that essential element argument to help him around prior art if I had to guess, otherwise it would be ridiculous to say that it was.

          1. 4.3.1.1.1

            Instead of an RCE, perhaps a continuation then…

            (See a recent article on that other blog…)

        2. 4.3.1.2

          “I said to Dr. Lamb, “There has to be a way to connect the cord to the toes.” At the end of our appointment, Dr. Lamb suggested that a strap
          configured in a figure ‘8’ that fit around the toes
          and wrapped around the lower part of the leg,
          above the paw, might be something to consider. In
          response, I said that I would try to figure out a
          way to make that work.””

  9. 3

    The slip opinion cites the Morse v. Porter decision as a BPAI case. The decision is, however, from the Board of Interferences, which predated its merger (for efficiency reasons) with the Board of Appeals to form the BPAI.

  10. 2

    I am glad to see that this was a unanimous opinion. During the oral arguments, Judge Newman kept raising the issue that perhaps this rejection was improper unless the PTO first declared a derivation proceeding. That struck me as kind of a waste of time on this record, so I am glad to see that she evidently also decided that it would have been a waste of time.

  11. 1

    Just curious (as this appears to be a pre-AIA item, recent rewriting of law may not be applicable), but what is the nexus between the public right or Franchise from the government to any such “co-inventors”?

    Must Franchise Rights that originate with the government (i.e., implicate the notion of Public Rights), be strictly tied to the traditional sense of an inchoate right that through examination became a personal property right?

    Does not the Franchisor have discretion to select a Franchisee?

    1. 1.1

      RE: Does not the Franchisor have discretion to select a Franchisee?

      Only within the limits provided by law. A patent “franchise” securing a “public” right to exclude others cannot be granted to any arbitrary “franchisee” the government “franchisor” chooses. It is bound by the constitution (“by securing for limited times to … inventors the exclusive right to their … discoveries”) and statutory law (in this case, 35 U.S.C. 115, 116 and pre-AIA 102(f)). Even a patent’s attributes of personal property (e.g. being assignable in law by an instrument in writing) are “subject to the provisions of this title” (35 U.S.C. 261).

      1. 1.1.1

        You are already in trouble with the word “secure.”

        (while indeed I “get” your desire to tie this back to the Constitution, doing so just raises trouble with the whole “franchise” concept – which was kind of the point)

      2. 1.1.2

        I think that talking about “franchisors” and “franchises” in this circumstance is just an application of the fallacy of equivocation. Webster’s dictionary gives 1967 as the first known use of the word “franchisor,” while “franchise” is much older, and makes regular appearances in patent jurisprudence starting back in at least 1853 (Bloomer v. McQuewan, 55 U.S. 539, 549). In other words, at the time that lawyers began speaking of the “patent franchise,” there was no such word as “franchisor,” so I doubt that anyone thought much about who was the “franchisor” or the “franchisee” relative to the “patent franchise.”

        It is only once “franchise” started to be used to mean “chain business” instead of “government granted intangible property right” that it made sense to speak of a “franchisor.” As such, when one uses “franchise” in its older sense, it makes no sense to ask who is the “franchisor” and what are the “franchisor’s” duties to the “franchisee.” It is a mere equivocation to treat concepts like “franchisor” and “franchisee” as if they have anything to do with “franchise” in its older, patent-related sense.

        1. 1.1.2.1

          I think that talking about “franchisors” and “franchises” in this circumstance is just an application of the fallacy of equivocation.

          LOL – turn that phrase on yourself and your own fallacy that one form of property is just like a different form of property.

        2. 1.1.2.2

          “I think that talking about “franchisors” and “franchises” in this circumstance…”

          Whoops. “I think that talking about ‘franchisors’ and ‘franchisees’ in this circumstance…”

          1. 1.1.2.2.1

            Your “whoops” needs to run a lot deeper and needs to be applied to yourself.

            As someone else also noted to you, there are court cases that use the term “patent monopoly.”

            That just does not make it so.

            A fallacy – and merely one – that you are engaging in is that you think that the current use is only in the manner of the ancient use.

            That too is just not so.

            Can you even find a “modern” quote to use? One that comports with the understanding of patents as personal property? Or do you want to just keep on pretending that the meaning in a decision in 2018 merely carries a meaning (in a different age’s context) of ancient vintage and NOT see that “Franchise Right” is just not appropriate?

            You want to call my post an exercise in a fallacy of equivocation and yet refuse to see your own much more blatant equivocation…

            That’s like you proclaiming some splinter in my eye with a log in your own.

            1. 1.1.2.2.1.1

              Anon

              I think what you see here is something more fundamental than patents as property, it is the contradiction in terms represented by “Franchise Rights”, and the modern Statist “spin” on what the word “rights” means.

              When Rights are not absolute, when they are not “by right” but “by favor” they are in fact permissions. You know that this means, consciously or not, the person using the word “rights” is not talking of Rights at all, but the modern Statist conception of the majority controlled State granted permission which not only is not absolute but is perfectly alienable from any individual should the majority deem it necessary or proper to withdraw.

              The concept of Rights which you hold does not even have a corresponding word to indicate it in the modern Statist parlance, so popular today, as conceptually, (knowingly or unknowingly) the referent is simply nonexistent.

              In a way you are more than simply speaking different languages, you are living in different universes, and quibbling over it wont make a difference.

              1. 1.1.2.2.1.1.1

                [T]he modern Statist conception of the majority controlled State granted permission which not only is not absolute but is perfectly alienable from any individual should the majority deem it necessary or proper to withdraw.

                Hm, exactly how “modern” is this (so-called) “Statist” conception of property rights vis-à-vis patents? N.B., for as long as there have been patent rights, there has been a corresponding understanding that the Sovereign has the absolute right to practice the claimed invention without the patentee’s prior permission, but with the understanding that such a taking must be compensated. Cramp & Sons Ship Co. v. Int’l Turbine Co., 246 U.S. 28, 40 (1918). Similarly, it has been understood since the beginning of the patent system that a patent claim is always subject to revocation post-grant if it is discovered that the putative grant violates the statutory standards for patentability and/or disclosure. O’Reilly v. Morse, 56 U.S. 62, 118 (1853).

                In other words, everything that you take as the “modern, Statist” view of property has been present in the U.S. patent system since the beginning. There is nothing particularly “modern” about such an understanding of property, unless you are using the word “modern” merely to distinguish from “classical” or “medieval.” If the patent system has functioned thus far with such an understanding of property (i.e., with an understanding that the government may intrude on the conceded right with a payment of “just compensation,” and that any putatively conceded right is subject to post-grant verification of its statutory validity and revocation where the grant turns out—with hindsight—not to conform to the statutory requirements), then it is not clear to me why the Supreme Court’s most recent word on the subject (a word which breaks no new ground at all) is somehow to be understood as a herald of the system’s impending doom. There is nothing especially “modern” here, and no more “Statist” than the system has ever known.

                1. This is not a response to what I have stated to anon as it does not address the substance.

                  BTW: The modern view of “rights” I am referring to is the Statist view of permissions granted by the state rather than Rights as inalienable and absolute (even if time limited) as they were conceived of around the time of the founding.

                  Although you have no doubt stated what has been done by Government actors since (perhaps even within a century of the founding) you have not addressed the point of my post to anon, which is that you (and most moderns) and he have different conceptions of what Rights are, and what is meant by the word “rights”.

                  In fact, the very idea that a description of what was done by government actors over the last century and a half could somehow addresses anything about the distinction between Rights as inalienable (which the State ought to secure, protect, and recognize but which it may or may not) and “rights” as permissions, given “by favor”, illustrates my very point.

                  You are of the view that patents do not secure or serve as recognition of ANY Rights at all, and you are now simply arguing they never have. You talk of “patent rights” that are rightless state granted whims.

                  Again, this does not address the actual content of my post to anon, and merely serves to illustrate my point that it is pointless.

                2. This is not a response to what I have stated to anon as it does not address the substance.

                  Possibly so. I may have misapprehended the substance of your assertion. Is it your contention then, that the U.S. has never had “rights”—in the sense that you intend by the term—in its patent system? I can certainly agree that in the strong sense that you apparently mean by “right,” the U.S. does not have patent “rights,” but only because it has never had patent “rights” in that apparently strong sense of the word. I guess I cannot see what the fuss is that the U.S. lacks patent “rights” in this sense, if it has gotten by without them so far and has still enjoyed all of the benefits of accelerated innovation that patents are meant to foster.

                  My point is that Oil States (or the AIA more broadly) does not represent any sort of change in the nature of the “right” that the patentee enjoys. Do you mean to say that there has been a change? If so, can you please point to an example of earlier law in which the grant was not revocable, or subject to the sovereign’s intrusion with V amendment compensation?

                3. Greg, you are doubly wrong here – as the US fundamentally had a different view of the patent right AND you miss the attempted distinction offered by Anon2.

                  Anon2, I do not have the bandwidth today to delve into your thoughtful post, but consider this: the fact that an attempt at portraying law through the lens of a “modern Statist view” does not in fact make the law so.

                  That would be akin to merely bowing to the loudest propagandist, and being s l a v e to such whims.

                  My view is perhaps different – but it is the correct view, and it is the view that reflects BOTH the nature and reality of innovation as well as the more Lockian understanding of wherefrom such generates and to whom such innovation belongs.

                  The State does NOT create a brand new “Right” from nothing, and in fact, is merely providing for the promotion in a Quid Pro Quo manner, which by its very nature (an exchange between two parties) distinguishes a “Franchise” created by the State and a different thing: a maturing of the inventor’s inchoate Right into a full legal right.

                  I am certain that other differences between types of property could be brought up and discussed if Greg insists on his subterfuge that “Franchise” property is still property, so that Oil States made no change, but he has as of yet shown no inclination to actually engage on any of those advances.

                4. Perhaps to be more direct then, Anon2, My thrust is not only NOT pointless – it is the very essential point to be had.

                5. You have very good points. They should be stated. I suppose there also is an audience that should hear also. The excercise perhaps is not one which is done with any expectation of pursuasion by reason of the recipient…

                6. You have very good points. They should be stated. I suppose there also is an audience that should hear also. The excercise perhaps is not one which is done with any expectation of pursuasion by reason of the recipient…

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