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[lacerda70]

Hi,

We have the following situation which I hadn't previously encountered and cannot find a solid answer after much searching:

Application 1 is a nonprovisional with inventors A, B and C.

Application 2 is filed as a continuation of Application 1 (which has since issued as a patent), originally with the same claims as Application 1.  Applicants subsequently filed a preliminary amendment canceling all claims and replacing them with a single new claim.  As a result of the claim cancelations, inventors A, B and C are no longer inventors and were removed by petition.  A new inventor, inventor D, is added as he is the only inventor of the subject matter now claimed in Application 2.

Seems to me the priority claim is no longer valid since, as a result of the amendment, there are no longer any overlapping inventors with Application 1.  The only thing I was able to find in the MPEP is a narrow exception where Application 1 lists inventors A, B and C, but during prosecution a restriction requirement is issued and the Applicant elects an invention of which only inventors B and C are properly listed (inventor A is removed), and a divisional is then filed with invention 2, the inventor of which is only inventor A.  In this case, priority is maintained despite the parent and divisional having no inventors in common as the result of a restriction requirement.  On the other hand, the MPEP does warn that removing inventors may affect the priority claim...

So, my take on this is that the parent application needs to be filed with claims covering all the subject matter in the application.  That way, you are sure to be able to meet the 120 requirements for overlapping inventors for any continuing or divisional application filed off THAT parent application.  However, if, for whatever reason, you file a first divisional/continuation listing only a subset of the inventors originally listed on the parent, you would NOT be able to file a divisional/continuation off the first divisional unless there is at least one inventor in common with those listed on the first divisional (if not, the second divisional would have to be filed directly off the parent).

Any thoughts?

[Isaac]

Seems to me the priority claim is no longer valid since, as a result of the amendment, there are no longer any overlapping inventors with Application 1. 

This is in fact not the case.   As long as the inventorship was not changed to correct an error, it is the inventorship as filed that counts.   You only need to file claims such that each inventor has contributed to the conception of the subject matter of at least one of the claims.   But deleting claims and correcting inventorship will not affect your ability to claim priority later.

[lacerda70]

Isaac, is there any authority to support that notion?

MPEP 201.03 (2.14.01) states that "The grant or denial of a request under 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application's filing date under 35 USC 120."  This statement refers to 37 CFR 1.48(a), not 1.48(b) but could this apply to 1.48(b)/(c) as well (i.e., where you've removed all previous inventors under (b) and added new ones under (c))?

The only support I can find for what you state is the specific example in the MPEP of the case where an original parent application lists e.g. inventors A and B, where inventor A contributed only to invention 1 and inventor B contributed only to invention 2.  A restriction requirement is made and invention 1 is elected requiring inventor B to be deleted under 37 CFR 1.48(b).  A divisional could nevertheless be properly filed with claims only to invention 2 (the inventorship overlap requirement is met even though at the time of filing divisional, overlap was lost due to deletion (also in MPEP 201.03).

If what you're saying is true, inventorship overlap is completely formalistic and does not necessarily have anything to do with what is ultimately claimed.  In other words, you could always maintain inventorship overlap e.g. in the facts of my original post, by originally filing each continuation with the claims of the parent and then filing preliminary amendments in each case cancelling all those claims and adding new claims, none of the inventors of which are common with those of the originally filed claims. 

Is this correct?

[NJ Patent1]

lacerda70:  I can't speak for Issac, but it appears that he is relying on the plain language of 35 USC 120 (... filed by an inventor or inventors named in the previously filed application).  Off-the-cuff, it appears that the section of the MPEP you refer to relates to the situation where one is trying to add and inventor, after filing, to support a claim to the benefit of the filing date of a parent application.  If the Petition to Correct is denied, there is no common inventor.  But I admit that, on first inspection, it seems fishy.  The inventor(s) relied on for the continuity claim disappear, and, poof!, a dark-horse inventor appears.

[lacerda70]

NJ Patent 1 - Exactly!  In such a case, you would have a parent and a continuation, each with an oath having not one inventor in common with the other since a new oath/declaration would have to be filed in the continuation to add the new inventor(s).  How can this possibly satisfy 120???

[Isaac]

This statement refers to 37 CFR 1.48(a), not 1.48(b) but could this apply to 1.48(b)/(c) as well (i.e., where you've removed all previous inventors under (b) and added new ones under (c))?

Of course not. 

Note that the statement in question only says what may happen.  Since it says may, it is apparent that in some situations, granting/denying the request under 1.48a will not remove the ability to file a continuation, but the statement does not spell out the details.  The use of permissive rather than mandatory language is a clear indication that the statement is not a rule, but a warning to practitioners to investigate further.   The real limitations on claiming the benefit of the parent's filing date are specified in 35 USC 120.

On the other hand, there are no circumstances under which correcting inventorship under 1.48b would create a new inability to file a continuing application on a properly disclosed invention, so no warning is necessary, and none is given.

If what you're saying is true, inventorship overlap is completely formalistic and does not necessarily have anything to do with what is ultimately claimed.  In other words, you could always maintain inventorship overlap e.g. in the facts of my original post, by originally filing each continuation with the claims of the parent and then filing preliminary amendments in each case cancelling all those claims and adding new claims, none of the inventors of which are common with those of the originally filed claims.

I wouldn't call the state of affairs formalistic.   The rule as you propose it would be formalistic, and would limit the statutory right granted in 35 USC for clerical reasons.   

The manipulations as you state them will work in those circumstances 35 USC 120 allows claiming the benefit of the parent filing date. 

[lacerda70]

Isaac,

I'm not sure it's as clear as you're making it out to be.  You seem to be relying entirely on your interpretation of the words of 120.

Obviously the statement refering to 37 CFR 1.48(a) would not necessarily result in lack of inventor overlap, but the fact that it MAY result in lack of inventor overlap and therefore ability to claim priority, certainly indicates that such a scenario is possible.  This would be the case where the granting of a petition under 1.48(a) in a continuation removes all the common inventors with the parent application. 

I'm not sure why the case would be any different if you file a request under 1.48(b)/(c) in a continuation which (1) removes all common inventors with the parent and (2) adds new inventors none of whom is also listed on the parent.  In such a case, you now have oaths in the parent and the continuation with NO COMMON INVENTORS.

One thing that might support your position is that 37 CFR 1.48(a) is essentially correcting the inventorship of the originally filed declaration whereas in the 1.48(b)/(c) scenario the declaration was correct when filing but the inventors have changed due to amendment.

I can say that I've discussed this with several experienced prosecutors and none of them are as sure as you seem to be and most lean towards it not being acceptable.

[bardencj]

For what's it's worth (not much probably), I agree that Isaac is probably right here. 

The issue is not so much being formalistic on inventorship, as it is recognizing that the subject matter disclosed in the application is often a superset of the material that is relied upon for the claims.  If there was material in the specification that could have been claimed at the outset, but was not claimed during prosecution of the first patent, then that unclaimed invention would be dedicated to the public upon issue of that patent _but for_ the fact that a continuation was filed and 35 USC 120 maintains pendency.  It would be inequitable to inventor D to deny him/her the opportunity to obtain claims for that invention in the continuation, simply because the initial filing overlooked that invention during prosecution.

To me, this seems like a fairly clear-cut application of the machinery of 1.48(b)/(c), in which the original-as-filed inventors are removed to cancellation of claims directed to their invention and other inventors are added to correct inventorship directed to the previously "unclaimed subject matter".  That subject matter was present at the filing of the original application, and it was invented by D, the "true and original inventor" per the oath he/she would sign, so why not allow pendency?

[lacerda70]

Hey, I WANT you guys to be right, but have to consider how an opponent would argue.

What's odd to me about this situation is nobody I have talked to has actually run into it and I wish I could find just one statement somewhere (case law, MPEP, etc) other than 120 itself.

Consider the following 2 scenarios:
(1) continuation is filed with claims 1-10 of the parent and subsequently claims 1-10 are canceled and replaced by claim 11, the inventor of which is not an inventor of claims 1-10, thereby requiring deletion of all inventors under 1.48(b) and addition of new inventor under 1.48(c) (i.e. my original scenario); and
(2) continuation is filed with claim 11 and declaration lists only new inventor

In each case, the claim being pursued in each continuation is the same and there is ultimately no overlap of inventorship between the continuation and the parent; however, in the first case, but not the second, inventorship overlap was present at the time of filing.

bardencj - your reasoning would suggest that the second scenario should be fine because this is simply an example of the continuation claiming subject matter that was disclosed but not claimed in the parent.

But it doesn't seem like the second scenario would allow priority to the first since no inventorship overlap was present at the time of filing.  Indeed, the statement that "The grant or denial of a request under 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application's filing date under 35 USC 120" certainly indicates that you can lose 120 priority to the parent application if no inventor overlap was present upon filing the continuation. 

Seems odd, no?

[Isaac]

Isaac,

I'm not sure it's as clear as you're making it out to be.  You seem to be relying entirely on your interpretation of the words of 120.

Obviously the statement refering to 37 CFR 1.48(a) would not necessarily result in lack of inventor overlap, but the fact that it MAY result in lack of inventor overlap and therefore ability to claim priority, certainly indicates that such a scenario is possible. 

What else should I rely on other than the statutory requirement.  Show me a rule that requires a different result.

Yes. It is possible that removing inventor Bob after swearing that his listing on the original application was inadvertent, might compromise your ability to file a future continuing application with claims purportedly invented by inventor Bob.  For example if the new claims are just broader versions of the old ones, most likely claiming Bob invented the subject matter of the new claims won't fly.  I can come up with a few other scenarios.  But the scenarios in which a request to remove an inventor due to error would result in an inability to have a true inventor overlap are predictable from an examination of 35 USC 120.   

The fact remains that the statements in the MPEP is not rules, and the statement in question is not even phrased as a rule.   There is absolutely no guidance on where the "may" will become "shall".   Do you believe that this is something in which the examiner has, or should have sole discretion? 

I'm not sure why the case would be any different if you file a request under 1.48(b)/(c) in a continuation which (1) removes all common inventors with the parent and (2) adds new inventors none of whom is also listed on the parent.  In such a case, you now have oaths in the parent and the continuation with NO COMMON INVENTORS.

The difference occurs because when you remove an inventor for the sole reason that you have removed claims, it is pretty clear that you have not removed an inventor who has contributed to a disclosed invention.  Accordingly, removing an inventor under rule 1.48b should not result in any loss of ability to claim priority based on the original filing.

It is true that in the current circumstance you must demonstrate to the USPTO's satisfaction, that inventor D did contribute to a properly disclosed invention.   But you would have to do that regardless of whether you added or removed any claims by preliminary amendment from the application.

One thing that might support your position is that 37 CFR 1.48(a) is essentially correcting the inventorship of the originally filed declaration whereas in the 1.48(b)/(c) scenario the declaration was correct when filing but the inventors have changed due to amendment.

That is the basis of my argument, and in fact, the above should be fairly obvious from the text of Rule 48.   I don't understand what your point is here.  The MPEP does not even suggest that the warning applies to Rule 48b.

I can say that I've discussed this with several experienced prosecutors and none of them are as sure as you seem to be and most lean towards it not being acceptable.

Perhaps I know better than they because I've seen the situation before.  As an examiner, I saw any number of divisional applications and resulting patents for which there was no overlap in inventorship with the parent AS ISSUED.   If there is doubt, a review of the file history should turn up enough information to decide whether the original application as filed disclosed subject matter invented by the listed inventor(s).

[lacerda70]

Isaac, so is it your position that the overlapping inventorship requirement of 120 is met in the case where a continuation is filed with claims having no inventors in common with the claims filed with the parent application?

In other words, does the overlapping inventor requirement of 120 refer to the subject matter disclosed in the parent and not the claims??  If this is the case, there would never be a situation where you wouldn't have overlapping inventors since the specifications are by definition the same.

On the other hand, if it applies to the claims (which it seems to me must be the case, since the inventorship is determined by what is claimed, not what is disclosed), then a continuation filed with claims having no inventors in common with the claims filed with the parent would not satisfy 120.  Which brings me back to my original point.

What exactly is the purpose of the overlapping inventor requirement anway?

[bardencj]

Seems to me that, provided inventor D really came up with subject matter that was disclosed in the parent, the overlapping inventorship requirement is simply an issue of form: "which is filed by an inventor or inventors named in the previously filed application".  A continuation application that used the original declaration on filing would satisfy this requirement, provided the claims at filing were the same.  A continuation application that had a new declaration and new claims on filing would not satisfy this requirement.  But it seems that subsequent change to the continuation's claims by amendment, even preliminary amendment, would be acceptable per 1.48(b)/(c). 

Where the MPEP language about 1.48(a) would come in to play here, is to say that declaring that you made an _error_ in the list of inventors on filing constitutes a kind of disclaimer to any priority.  In effect, it is an admission that the original inventors did not file the continuation. 

But 1.48(b)/(c) says nothing about an error.  So long as the continuation claims as filed could still rely on at least one inventor, then it ought to be possible to change the inventorship without disclaiming priority.  Again, I don't have any authority to cite here, but I think that is a crucial distinction.

[NJ Patent1]

lacerda70:   This is a very interesting (to me) thread.  Parsing statutes, parsing subservient regs, parsing non-binding (at law) but sometimes “authoritative” passages in the MPEP, and considering policy.  A law professor’s dream exam question!!   

This present post is directed to your reply of 2012.01.05 @ 15:21 (on my clock) only.  I need time to consult the cited regs again, and consider the follow-on posts by Issac. bardenjc, and you.  And I haven’t consulted - over even looked for - any on-point case law. 

There were four persons, A, B, C, & D who contributed to patent-eligible subject matter disclosed in the parent.  Because only subject matter invented by A, B, and C was ever claimed in the parent as filed, only A, B, and C were named inventors and only A, B, and C filed O&Ds.  D was (lawfully) left off (bad decision ? good practice tip here?).  On Constitutional grounds, I agree that named inventorship should, at the END of the (issue) day, correspond to actual/real/true inventorship for what is claimed in an issued patent.  But what does that say about “inventor … NAMED in the previously filed [parent] application” in §120?   

Does it mean what it facially says, “named” (i.e the legal name simply appears on some formal papers in the file - formalistic in your words) in the prior application, or does it mean “one who’s name is on a formal paper in the file AND who is an inventor of the subject matter of at least one claim as filed in the parent and now sought to be claimed” ?   It seems that UR question distills down to whether I should read 35 USC 120  according to its plain terms or as follows.  #

§120: An application for patent for an invention [now sought to be claimed] disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, …which is filed by an inventor or inventors [of what is now sought to be claimed] named in the previously filed application shall have the same effect…#.  Can one "apply for a patent" for an "invention" not claimed?  Disclose yes, but apply for?   

Reading the statute as I annotate it above, and I’m reading words into it, the priority claim in the OP scenario should fail.  Resort to the Office’s regulation doesn’t really help me much.  They are only regs (forget the MPEP, at best it binds Examiners, not DCs or the CAFC.  SCOTUS? fugedaboutit).  But IMO Rule 48(c), maybe (a) too, appears to come close, allowing me to add claims AND add an “inventor”, contemplating that claims - and importantly an INVENTOR - could be left off (or included) and later added (deleted) to accommodate addition (deletion) of claims in an already filed and Dec’d-up application.  Isn’t that the scenario in the OP?  .

Absent case law to the contrary, as your adversary in litigation, I’d argue for my annotated construction of §120 above.  As a policy matter, D never manned-up and signed an O&D when the parent was filed.  Why should D now be entitled to claim priority on the backs of A, B. & C who have no inventive connection whatsoever with what is now claimed (if they did, they would be inventors).  D was never an inventor of record.   

But OTOH I’d argue that, per the OP, the child was filed with proper inventorship - duplicate claims and duplicate inventors thereof - preserving continuity and the priority claim under §120, inventorship was later amended as required by claim amendments, in total conformity with Rule 48(c). 

Lots of words, no conclusion, no concrete help 4 U.    Time to hit Lexis / Westlaw?  #

I have an alternative to your tactic for dodging the issue - if there really is one - which putative issue I have never encountered.  I’ve always named all inventors of all subject matter disclosed in the application - rarely have I had more than 4 inventors-  then amended inventorship in the 1 out of 50+ cases where it was ever IMO plainly lawfully required.  I don’t generally claim hats - invented by A, B and C - and shoes, invented by D - in the same application.  And, in any event, my intent in naming all on filing was strategic - kick the inventorship can down the road to prosecution- never deceptive.  #

Of course, your suggestion of filing at least one claim to which ALL putative inventors contributed - conception or reduction - works as well, or maybe better.  If, despite all efforts, one just can’t draft such an "umbrella"claim, one likely has a unity-of-invention problem - claiming hats (invented by A, B and C) and shoes (invented by D) in the same application - and your client is too cheap to pay two sets of fees - or to pay that tiny fee for just one measly extra claim.  In which case, IMHO, they get what they deserve - continuity fails. 

[lacerda70]

Thanks all for the responses - great stuff here.

At the end of the day, I think NJ Patent 1's most recent post summarizes the situation quite well.

I'll post here if any clarifying case law/etc. turns up.