MPEP 2137.01
IV. THE INVENTOR IS NOT REQUIRED TO REDUCE THE INVENTION TO PRACTICE
Difficulties arise in separating members of a team effort, where each member
of the team has contributed something, into those members that actually
contributed to the conception of the invention, such as the physical
structure or operative steps, from those members that merely acted under the
direction and supervision of the conceivers. Fritsch v. Lin, 21 USPQ2d 1737
, 1739 (Bd. Pat. App. & Inter. 1991) (The inventor“took no part in
developing the procedures…for expressing the EPO gene in mammalian host
cells and isolating the resulting EPO product.” However, “it is not
essential for the inventor to be personally involved in carrying out process
steps…where implementation
of those steps does not require the exercise of inventive skill.”); In re
DeBaun, 687 F.2d 459, 463, 214 USPQ 933, 936 (CCPA 1982) (“there is no
requirement that the inventor be the one to reduce the invention to practice
so long as the reduction to practice was done on his behalf”). See also
Mattor v. Coolegem, 530 F.2d 1391, 1395, 189 USPQ 201, 204 (CCPA 1976) (one
following oral instructions is viewed as merely a technician); Tuckerv.Naito
, 188 USPQ 260, 263 (Bd. Pat. Inter. 1975) (inventors need not “personally
construct and test their invention”); Davis v. Carrier, 81 F.2d 250, 252,
28 USPQ 227, 229 (CCPA 1936) (noninventor’s work was merely that of a
skilled mechanic carrying out the details of a plan devised by another).
