US Court of Appeals Rejects Patent Application in Re: VerHoef for Failing to Name Co-inventor

On May 3, 2018, in re: VerHoef, the United States Court of Appeals for the Federal Circuit (Court) upheld the decision of the Patent Trial and Appeal Board (Board) affirming the examiner’s rejection of all claims contained within patent application 13/328,201 (‘201 Application).

Mr Jeff VerHoef (VerHoef), the named inventor, designed and built a dog harness which originally did not work as intended. It was only after VerHoef incorporated a particular strap combination, as suggested by his veterinarian Dr Lamb (Lamb), that the invention worked as intended. VerHoef subsequently filed a patent application for naming both himself and Lamb as co-inventors. Several month later, relations between VerHoef and Lamb broke down and their joint application was abandoned. VerHoef and Lamb then both individually filed their own patent applications claiming the invention as their own.

Unfortunately for VerHoef, at the time the US Patent Act included an express requirement that the patent inventor be the applicant. However, VerHoef improperly omitted the co-inventor, Lamb, from the application. During examination of VerHoef’s application, Lamb’s parallel application was uncovered and the examiner and rejected VerHoef’s claims on the basis that he “did not invent the claimed subject matter”. This ruling was affirmed by the Board and was ultimately upheld by the Court.

Additional Commentary by Dennis Crouch is available here.

Summary By: Jae Morris