ANSWER: (A) is the most correct answer. See MPEP § 2137.01, under the heading “The Inventor Is Not Required To Reduce The Invention To Practice,” citing In re DeBaun, 214 USPQ 933, 936 (CCPA 1982). (B) is not correct. MPEP § 2137.01, under the heading “An Inventor Must Contribute To The Conception Of The Invention,” citing, Fiers v. Revel, 25 USPQ2d 1601, 1604 – 05 (Fed. Cir. 1993); and In re Hardee, 223 USPQ 1122, 1123 (Dep. Asst. Comm’r Pat. 1984). (C) is not correct. MPEP § 2137.01, under the heading “As Long As The Inventor Maintains Intellectual Domination Over Making The Invention, Ideas, Suggestions, And Materials May Be Adopted From Others,” citing Morse v. Porter, 155 USPQ 280, 283 (Bd. Pat. Inter. 1965); and New England Braiding Co., Inc. v. A.W. Chesterton Co., 23 USPQ2d 1622, 1626 (Fed. Cir. 1992). (D) and (E) are not correct. 35 U.S.C. § 116; MPEP § 2137.01, under the heading “Requirements For Joint Inventorship.”
Q) Inventor (4.03.15p)
Recent test takers report question #15 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
15. Able conceived the invention claimed in a patent application. In conceiving the invention, Able used and adopted ideas and materials known in the art and invented by others. Ben, Able’s employee, reduced the invention to practice at Able’s request and totally pursuant to Able’s suggestions. Being unable to afford a patent practitioner’s fees to prepare and prosecute the application, Able convinced John to pay for the practitioner’s services in return for an interest in the invention. John did nothing more than provide the funds for the practitioner. Which of the following is in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Able need not be the one to reduce the invention to practice so long as the reduction to practice occurred on his or her behalf. Able can be properly named as inventor in the application.
(B) To be named an inventor, it is not necessary for John to have contributed to the conception of the invention. Ben, not Able, can be named as inventor in the application.
(C) In conceiving the invention, Able may not consider and adopt ideas and materials derived from any sources, such as ideas of previous inventors. Able cannot be properly named as inventor in the application.
(D) John and Able may be properly named as joint inventors of the invention in the application.
(E) John, Ben, and Able may be properly named as joint inventors of the invention in the application.