[Patentpractice] Expansive MPEP Interpretation of 35 USC 102(b)(1) - not consistent with the statute; MPEP 2153.01(a)

[David Boundy]

Before you go this route, let me suggest another that may well be both
cheaper and lower risk.  Pre-AIA, at least for applications, overlapping
inventors are "another" to the new inventors.  (In re Lamb if I recall).
Unless there's a pretty clear statement in legislative history of intent to
change this, you're going to have  steep climb.  But pre-AIA law was that
authorship on a paper did not equate to inventorship on a contemporaneous
patent application.  If that memory of mine is correct, you might have an
easier slope to get a declaration that the paper evaluated under standards
of *inventorship* has same inventors as the patent application.  With a
little Westlaw time, I think youll find a case from the 1970's to support
this.

If you have to go your proposed route on the statutory issue, spend some
quality time in the legislative history.   I don't recall seeing anything
about this specific issue, though there was a general concern (especially
among the big pharma folks who were the big advocates of this part of the
AIA) for reducing self-collisions as much as possible.  If you don't find
anything direct in Congressional Record, it might be helpful to look at Joe
Matal's article (in Federal Circuit Bar Assn J if I recall?)

I wouldnt start this path unless you are fully prepared to go all the way
to Federal Circuit.  Some of the APJs will take the view that the
Director's interpretation carries great weight.  Some won't.  You should
thoroughly argue the administrative law implications of guidance (google
"PTAB is Not an Article III Court Part 3  Precedential Opinions" -- youll
get an article that gives you a big head start).  The Supreme Court in a
couple months will give a decision in Loper Bright that will clarify the
role of guidance in statutory interpretation.  (google "Loper Bright
PTAAARMIGAN" for my prediction of where Loper Bright will come out.)

On Sat, Feb 17, 2024, 9:55 AM Andrew Berks via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I got an obviousness rejection based in part on a paper published 6 months
> before the patent application filing date. The paper had 8 authors, 2 of
> whom were inventors on the patent.
> I asserted that the paper was not prior art based on 35 USC 102(b)(1) - a
> paper published less than one year before the filing date made by the
> inventor or joint inventor is an exception to 102(a)(1).
> The examiner refused to discount the paper b/c of the other authors. This
> is part of MPEP 2153.01(a), explaining that a disclosure is not prior art
> if it (1) was made one year or less before the effective filing date of the
> claimed invention; (2) names the inventor or a joint inventor as an author
> or an inventor; and (3) does not name additional persons as authors on a
> printed publication or joint inventors on a patent.
> My view is that the MPEP takes an expansive reading of the statute. The
> statute is silent as to the case, where as here, there are additional
> authors on a paper that names the inventors as authors and was published
> less than one year before the priority date. The MPEP reads in a
> requirement that is not part of the statute. Moreover, the MPEP cites no
> precedent for this added requirement.
> I'm going to make this argument on appeal to the PTAB, which is the next
> step in this application.
>
>
>
> Andrew Berks, Ph.D., J.D. | Partner
>
> Patent Attorney and IP Licensing
>
> FRESH IP PLC
>
> 28 Liberty St 6th Fl
>
> New York NY 10005 (US)
>
> Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
> e: andrew at freship.com | w: www.freship.com berksiplaw.com
>
> Direct: +1-845-558-7245
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
> <http://voice.google.com/calls?a=nc,%2B18455587245>
>
> --
> Patentpractice mailing list
> Patentpractice at oppedahl-lists.com
>
> http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240217/c13ffbf0/attachment.htm>