Inventorship, Double Patenting, and the America Invents Act

Abstract

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.

Keywords: inventorship, double patent, patent, America Invents Act, Hubbell, Gilead

JEL Classification: K20