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

Sat Feb 17 20:59:11 EST 2024

IN ADDITION TO PRIOR COMMENTS, NOTE THAT EVEN AN ARTICLE THAT _DOES
NOT_ name the inventor as author can be removed as prior art lees than
one year if "the disclosure was made ... by another who _OBTAINED_ the
subject matter disclosed directly or indirectly from the inventor or a
joint inventor." 35 U.S.C. 102(b)(1)(A). 
This provides more options for making the statement per MPEP 2155.01,
in particular if the inventor is_ NOT_ the first author in the
article, by explaining that the role of the other authors may have
been merely to _WRITE_ the article that describes subject matter
"obtained" from the inventor.

Ron

	_-------------------------------------------------------_

	_Ron D. Katznelson, Ph.D._ 

	_2020 CHAIRMAN, __IEEE-USA IP COMMITTEE [1]_ 

	_OFFICE:__ 760 753-0668_ 

	_EMAIL:__ rkatznelson at roadrunner.com ___ 

	_SELECTED WORKS__: __http://works.bepress.com/rkatznelson_ [2]__
_SSRN:__:_ http://ssrn.com/Authorid=706742 [3] _ _

	-----------------------------------------From: "Bryan McWhorter via
Patentpractice" 

To: "For patent practitioners. This is not for laypersons to seek
legal advice."
Cc: "Bryan McWhorter"
Sent: Saturday February 17 2024 9:36:57AM
Subject: Re: [Patentpractice] Expansive MPEP Interpretation of 35 USC
102(b)(1) - not consistent with the statute; MPEP 2153.01(a)

 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 
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  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 [4] berksiplaw.com [5] 

	  Direct: +1-845-558-7245 [6] [7] [8] [9] [10] [11] [12] [13] 

     --
 Patentpractice mailing list
Patentpractice at oppedahl-lists.com
 [14]http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
[15]
  --
 Patentpractice mailing list
Patentpractice at oppedahl-lists.com
 [16]http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
[17]

Links:
------
[1]
http://webmail.spectrum.net/HTTPS://IEEEUSA.ORG/VOLUNTEERS/COMMITTEES/IPC/
[2] http://works.bepress.com/rkatznelson
[3] http://ssrn.com/Authorid=706742
[4] http://www.freship.com/
[5] https://berksiplaw.com/
[6] http://voice.google.com/calls?a=nc,%2B18455587245
[7] http://voice.google.com/calls?a=nc,%2B18455587245
[8] http://voice.google.com/calls?a=nc,%2B18455587245
[9] http://voice.google.com/calls?a=nc,%2B18455587245
[10] http://voice.google.com/calls?a=nc,%2B18455587245
[11] http://voice.google.com/calls?a=nc,%2B18455587245
[12] http://voice.google.com/calls?a=nc,%2B18455587245
[13] http://voice.google.com/calls?a=nc,%2B18455587245
[14]
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
[15]
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
[16]
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
[17]
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/20240218/8bd51f24/attachment.htm>