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

[Bryan McWhorter]

Echoing prior comments, take a look at MPEP 2155.01:
Where the authorship of the prior art disclosure includes the inventor or a
joint inventor named in the application, an unequivocal statement from the
inventor or a joint inventor that the inventor or joint inventor (or some
combination of named inventors) invented the subject matter of the
disclosure, accompanied by a reasonable explanation of the presence of
additional authors, may be acceptable in the absence of evidence to the
contrary. See *In re DeBaun,*687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA
1982).

On Sat, Feb 17, 2024 at 8:26 AM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>>
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