Before Newman, Mayer, and Lourie. Appeal from the Patent Trial and Appeal Board.
Summary: An application is unpatentable under pre-AIA 35 U.S.C. § 102(f) when the application does not name the correct inventors.
After relations with a co-inventor (Lamb) soured, VerHoef abandoned a previously-filed patent application listing two inventors (VerHoef and Lamb) and filed a substantially identical application listing himself as the sole inventor. The Examiner rejected all claims of the later-filed application as unpatentable under pre-AIA 35 U.S.C. § 102(f). VerHoef appealed to the Patent Trial and Appeal Board (“the Board”), which concluded that Lamb was a joint inventor of the claimed invention and sustained the Examiner’s rejection.
The Federal Circuit affirmed the Board’s decision. The Federal Circuit found that Lamb qualified as an inventor because she contributed an essential feature of the invention that was not insignificant in quality or well-known in the art. Because the application did not name the correct inventors and the applicant did not file a request to correct inventorship, the Federal Circuit held that the Board properly sustained the examiner’s rejection of the claims under § 102(f).