Federal Circuit affirms PTAB’s rejection of dog mobility patent
The US Court of Appeals for the Federal Circuit has confirmed that individuals need not have contributed equally to be considered joint inventors of patentable subject matter, in a case involving a dog mobility device.
Circuit Judge Alan Lourie delivered the court’s judgment yesterday, May 3.
Jeff VerHoef filed an application to patent a dog mobility device at the US Patent and Trademark Office (application number 13/328,201) in which he listed himself as the sole inventor. An examiner rejected the application on the basis that VanHoef did not solely invent the device.
In response VanHoef submitted an affidavit which described the origins of the invention, relating to his pet dog’s post-surgery walking difficulties. VanHoef said he met with a veterinarian, Alycia Lamb, to explore the therapy options and subsequently constructed a homemade harness.
VanHoef realised that the harness would work better if connected to the dog’s toes, an idea he said he shared with Lamb. Lamb suggested that a strap configured in the shape of a figure eight could be worth considering, and VanHoef implemented her idea.
After further adjustments he contacted an attorney, who filed a patent application listing both VerHoef and Lamb as the inventors.
In 2011 relations soured between VerHoef and Lamb and the application was abandoned. VerHoef filed an application listing himself as the sole inventor, with the filing being “substantially identical” to one made on the same day by Lamb, who claimed herself as the inventor, Lourie explained.
After receiving VerHoef’s affidavit, the examiner issued a final rejection to his application. On appeal, the Patent Trial and Appeal Board (PTAB) affirmed the examiner’s rejection of all claims of the pending patent application.
The board said VerHoef did not solely invent the subject matter as he claimed, and the claims are therefore unpatentable. The figure eight loop was an essential element of the claimed invention and the idea was therefore not complete until Lamb suggested it.
At the Federal Circuit, Lourie confirmed that “one cannot obtain a valid patent if he did not himself invent the subject matter sought to be protected”. A patent must accurately name the inventors of its claimed subject matter, he explained.
VerHoef conceded that the figure eight loop was an essential feature of the invention. But he argued that he was the sole inventor because he maintained “intellectual domination” and control over the inventive process, despite not conceiving of every feature of the invention.
As summarised by Lourie, VerHoef claimed Lamb’s “naked idea was emancipated when she freely gave it to VerHoef”. The court said it could not locate any case adapting such an emancipation theory.
It added that in the context of a joint invention it is not necessary that the inventors contribute equally. Lamb is a joint inventor as she contributed the idea of the figure eight loop, an essential figure of the claimed invention which distinguished the overall invention over prior art, Lourie explained.
He said VerHoef’s affidavit made it “clear” that he did not solely invent the subject matter at the centre of the patent application, which itself establishes that “Lamb was a joint inventor improperly omitted from the application”.
Lourie concluded that the PTAB was correct to conclude that VerHoef did not solely invent the subject matter claimed in the ‘201 application. The Federal Circuit therefore upheld the board’s decision.
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