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sufficient to make him a joint inventor.).

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58. Dana-Farber, 964 F.3d at 1372-74 (Drs. Freeman and Wood were found to be joint inventors even though they did not conceive of the claimed invention of using anti-PD-1 antibodies to treat tumors but instead discovered the expression of PD-L1 in human tumors and that PD-1/PD-LI interaction inhibits the immune response.).

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59. Verhoef, 888 F.3d at 1367 (court refused to endorse the “intellectual domination” language and emphasized that the person who conceives of the invention is the inventor).

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60. See 35 U.S.C. 171 (https://www.govinfo.gov/link/uscode/35/171).

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61. Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002) (“We apply the same standard of inventorship to design patents that we require for utility patents.”) (citing In re Rousso, 222 F.2d 729, 731 (CCPA 1955)).

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62. See 35 U.S.C. 161 (https://www.govinfo.gov/link/uscode/35/161).

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63. In re Beineke, 690 F.3d 1344, 1352 (Fed. Cir. 2012).

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Back to Citation 64. Id. at 1348.

65. See 37 CFR 1.56 (https://www.ecfr.gov/current/title-37/section-1.56), 1.555 (https://www.ecfr.gov/ current/title-37/section-1.555). For patent applications, including reissue applications, these individuals include each inventor named in the application, each attorney or agent who prepares or prosecutes the application, and “[e]very other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.” 37 CFR 1.56(c) (https://www.ecfr.gov/current/title-37/ section-1.56#p-1.56(c)); see 37 CFR 1.171 (https://www.ecfr.gov/current/title-37/section-1.171). For reexamination proceedings, these individuals include “the patent owner, each attorney or agent who represents the patent owner, and every other individual who is substantively involved on behalf of the patent owner in a reexamination proceeding.” 37 CFR 1.555(a) (https://www.ecfr.gov/current/title-37/ section-1.555#p-1.555(a)).

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66. 37 CFR 1.56(a) (https://www.ecfr.gov/current/title-37/section-1.56#p-1.56(a)), 1.555(a) (https:// www.ecfr.gov/current/title-37/section-1.555#p-1.555(a)).

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67. See 37 CFR 42.11 (https://www.ecfr.gov/current/title-37/section-42.11); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130, Paper 15 at 9-10 (PTAB Feb. 25, 2019) (precedential) (“Under 37 CFR 42.11 (https://www.ecfr.gov/current/title-37/section-42.11), all parties have a duty of candor, which includes a patent owner's duty to disclose to the Board information of which the patent owner is aware that is material to the patentability of substitute claims, if such information is not already of record in the case.”).

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Back to Citation 68. MPEP 2157.

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