IP Law Daily Application for dog harness properly rejected for failure to name joint inventor
Thursday, May 3, 2018

Application for dog harness properly rejected for failure to name joint inventor

By Thomas Long, J.D.

The Patent Trial and Appeal Board correctly rejected a patent application relating to a dog mobility harness device because the applicant did not solely invent the claimed subject matter on which he asserted sole inventorship, the U.S. Court of Appeals for the Federal Circuit has decided. A figure-eight loop for the claimed dog harness was conceived of and suggested by another person, and the invention was not complete without this essential feature. Furthermore, the applicant did not maintain "intellectual domination" over the inventive process, and the person not named on the application was a joint inventor. Therefore, the application was properly rejected under 35 U.S.C. §102(f) (In re VerHoef, May 3, 2018, Lourie, A.).

Jeff H. VerHoef filed Application No. 13/328,201 ("the ’201 application"), which contained a single independent claim that recited a dog harness with an figure eight loop that engaged the dog’s toes in order to assist with the forward movement of a dog with impaired rear paws and to prevent "knuckling," that is, the dog putting weight on its paws’ knuckles. The ’201 application named VerHoef as the sole inventor.

After the USPTO’s examiner initially rejected the application under (pre-America Invents Act) 35 U.S.C. §102(f), on the ground that VerHoef himself did not himself invent the subject matter sought to be patented, VerHoef submitted an affidavit describing the origins and conception of the claimed invention. VerHoef stated that after his dog developed difficulty walking, VerHoef met with a veterinarian, Dr. Alycia Lamb, to begin rehabilitative therapy for the dog. Lamb suggested trying a commercially available harness that would provide support to the hind leg, but the harness did not fix the knuckling problem. VerHoef constructed a homemade harness modeled on the commercial one, but this yielded similar unsatisfactory results. VerHoef stated that he then recognized that the harness would work better if it were connected to the dog’s toes. VerHoef discussed the idea with Lamb, and, according to VerHoef, "Dr. Lamb suggested that a strap configured in a figure ‘8’ that fit around the toes and wrapped around the lower part of the leg, above the paw, might be something to consider." VerHoef implemented Lamb’s figure eight idea; after further adjustments, he found that he had a harness that successfully solved the knuckling problem.

VerHoef contacted a patent attorney, who then filed a patent application directed to the homemade dog harness listing both VerHoef and Lamb as joint inventors. Relations between VerHoef and Lamb soured, and VerHoef’s patent attorney abandoned the joint application and filed a substantially identical application, the ’201 application, listing VerHoef as the sole inventor. That same day Lamb also filed a substantially identical application listing herself as sole inventor.

After VerHoef submitted the affidavit, the examiner issued a final rejection under Section 102(f). The rejection stated that VerHoef "did not invent the claimed subject matter." VerHoef appealed to the Patent Trial and Appeal Board. The Board held that the paw loop configured in a figure eight was an essential element of the claimed invention, and conception was not complete until Lamb suggested the figure eight loop. In addition, the Board determined that VerHoef did not maintain "intellectual domination" over the inventive process. Lamb was a joint inventor of the claimed invention, the Board concluded. VerHoef appealed to the Federal Circuit.

The court noted that VerHoef conceded that the figure eight loop was an essential feature of the claimed invention, and that the feature was conceived and suggested to him by Lamb. However, VerHoef argued that he should nonetheless be declared the sole inventor on the ’201 application because he maintained "intellectual domination and control of the work."

The court disagreed with VerHoef and agreed with the USPTO’s finding that Lamb was a joint inventor. Lamb was a joint inventor because she contributed the idea of the figure eight loop, and the figure eight loop was an essential feature of the claimed invention, the court explained. During prosecution, VerHoef argued that the configuration of the paw loop, which necessarily included the figure eight loop, distinguished the claimed invention over the prior art. Thus, the court said, Lamb’s contribution of the figure eight loop was not insignificant in quality, an explanation of a well-known concept, or a summary of the prior art. The court rejected VerHoef’s "intellectual domination" argument because the key idea of the figure eight loop was Lamb’s, not VerHoef’s. Lamb "freely volunteered" the idea of the figure eight loop during a therapy session for VerHoef’s dog.

Under Section 102(f), a person is not entitled to a patent if "he did not himself invent the subject matter sought to be patented." This provision made the naming of the correct inventor or inventors a condition of patentability, the court said. Failure to name them renders a patent invalid. Therefore, the examiner was required to reject the ’201 application, and the Board properly sustained the examiner’s rejection, the court concluded.

The case is No. 2017-1976.

Attorneys: Thomas E. Loop (Loop Intellectual Property Law PLLC) for Jeff H. VerHoef. Meredith Hope Schoenfeld, U.S. Patent and Trademark Office, for Andrei Iancu.

MainStory: TopStory Patent FedCirNews

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