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March 07, 2013

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Comments

One of the inequitable scenarios that could arise under In re Hubbell's relaxed requirement for ODP rejections:

1. Inventors A & B working for Company X invent a “X-type” widget.

2. Company X files for patent claiming “X-type” widget with co-inventors A & B.

3. Inventor A leaves Company X to be become employee of competing Company Y.

4. Inventors A & C working for Company Y invent a new “Y-type” widget.

5. Company Y files patent claiming “Y-type” widget with co-inventors A & C.

6. USPTO issues patent on later-filed “Y-type” widget to Company Y. [It gets through faster for any number of reasons.]

7. USPTO issues ODP rejection of earlier-filed “X-type” widget claims based on the later-filed but earlier-issued “Y-type” widget patent - even though the X-type widget never shared a common inventive entity or common assignee. [Examiner now citing In re Hubbell]

8. Company X cannot file a TD over its competitor Company Y's patent. [Its best hope is a 2-way obviousness determination. But winning that concession from USPTO likely very difficult unless there is very clear evidence of USPTO delay.]

NOTE: This scenario could occur even if Companies X and Y filed their patents on the same day. Also, under AIA no 102(f) derivation anymore and the derivation proceeding process appears to be very strict in applying only to “substantially the same invention”.

Isn't derivation or its predecessor interference the better procedural path?

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