Interference 102,760
priority. The “count,” as distinguished from a party’s
“claim,” need not be patentable to either party in the
sense of being fully supported by either party’s
disclosure.
Because the invention defined by the interference count
need not be patentable to either party to the interference,
the invention defined by the interference count may be
unpatentable under 35 U.S.C. § 102(f). Similarly, the
inventorship requirements of 35 U.S.C. § 116 do not apply to
the full scope
of the invention defined by an interference count. On the
other hand, it is not disputed that the inventorship
requirements of
35 U.S.C. § 116 must be met for the full scope of the subject
matter claimed to be patentable to the named joint inventors.
Here, the issue raised by Rapoport’s motion is
unpatentability of the invention Dement et al. claim under
35 U.S.C. § 102(f), and the inventorship provisions of 35
U.S.C. § 116 certainly apply. Under Section 116, “[i]t is not
necessary that the entire inventive concept should occur to
each of the joint inventors. . . . One may do more of the
experimental work while the other makes suggestions from time
to time.” Monsanto Co. v. Kamp, 269 F. Supp. at 824, 154 USPQ
at 262.
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