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2016 Winter Newsletter - Inventorship, Double Patenting, and the America Invents Act
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  Winter 2016

  BPLA Newsletters

 BPLA NEWSLETTER
 Volume 47, Issue 1

Inventorship, Double Patenting, and the America Invents Act

by N. Scott Pierce of Hamilton, Brook, Smith & Reynolds, PC



N. Scott Pierce



Published by the BPLA with The Regents of the University of California, the Berkeley Technology Law Journal, and the author’s permission.

 

December 1, 2015

 

The Leahy-Smith America Invents Act of 2011 (AIA) defines an “inventor” as “the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.”  Prior art that consists of a “disclosure...made by the inventor or joint inventor” or “subject matter [that] had, before such disclosure, been publicly disclosed by the inventor or a joint inventor,” when disclosure is “made 1 year or less before the effective filing date of a claimed invention,” is excepted from the novelty requirement.  However, there is nothing in the AIA or its legislative history that specifies whether the “disclosure” by the inventor or joint inventor must be the work of the inventive entity of the invention claimed, or need only be the work of an individual member or subgroup of that inventive entity.  Guidelines developed by the United States Patent and Trademark Office (USPTO) do not clarify this issue.  Early commentary on the AIA suggests that the work “disclosed” need not be that of the entire inventive entity.  Such an interpretation, if confirmed by the courts, would be a radical and unnecessary departure from judicial precedent and would fundamentally change the effect of prior work by individuals on claimed joint inventions to which they contributed.  The judicially created doctrine of obviousness-type double patenting, which limits inventors to a single patent for each invention considered patentably indistinct in view of another, would also be implicated, as would a recently proposed statutory alternative.

 

The entire article can be found at the Berkeley Technology Law Journal, Vol. 30, No. 2, 2015



 

Boston Patent Law Association

One Batterymarch Park, Suite 101,

Quincy, MA 02169

Phone: 617.507.5570

www.bpla.org


 

 

 

 

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Boston Patent Law Association
One Batterymarch Park, Suite 101
Quincy, MA 02169
Phone: 617.507.5570

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