Inventorship, correction

Inventorship correction before the issuance of the patent is preferred and is governed by 35 U.S.C. 116 of the U.S. patent law which provides in part ... 

In practice, inventorship correction in a patent application depends on the circumstances for the correction, but in most cases requires a statement from each person being added and/or deleted that the error occurred without deceptive intent.12 In cases where an inventor or group of inventors refuse to sign such a statement or are otherwise not able to sign, it is possible for the assignee (assuming the invention has been assigned to another party such as an employer) to file a petition to the... 

Now that we have examined the important relationship between patent inventorship and initial ownership as well as the relationship between correct inventorship and patent validity, we can better appreciate the importance of determining inventorship correctly in the first place, so as to avoid any uncertainties that accompany a patent with improperly listed inventors. Unfortunately, inventorship determination is one of the muddiest concepts in the muddy metaphysics of patent law it deigns to draw clear boundaries around subject matter that is often amorphous and subjective.24 Inventorship issues typically arise when joint inventorship is being considered and the question revolves around whether one or more individuals contributions qualify them as joint inventors.25... 

A reissue may be ordered to correct any minor or major mistake which occurred during prosecution of a patent, but the mistake must be one that makes the patent partially or whoUy inoperable. Inoperable essentially means that the patent caimot be enforced. For instance, a reissue proceeding can be used to correct inventorship or even broaden claims if the patent is less than two years old. However, such a request to broaden claims in the context of reissue may not be undertaken to recover subject matter canceled during examination. Further, a reissue proceeding may be undertaken to correct formal problems or address newly discovered prior art which affects the scope of the claims. The nature of a reissue proceeding directs that this mechanism should be used only when the vaUdity of the patent is in question owing to the error or problem in question. 

As we saw in the previous section, properly determining inventorship is important because inventorship determines initial ownership and all of the attendant financial considerations that go with it. Listing proper inventorship is also critically important because improper inventorship means that the inventors listed are not the actual inventors of the subject matter. If you are thinking to yourself, so what then you need to recall that 102(f) of the U.S. patent code provides that A person shall be entitled to a patent unless. ..he did not himself invent the subject matter sought to be patented (emphasis added). In 102(f), the word he refers to the inventive entity (all of the inventors) named on the patent.10 Thus if an inventor has been left off the patent (referred to as nonjoinder of a proper inventor), then the listed inventors did not invent the subject matter of the claimed invention entirely themselves since they did not invent all of the subject matter of the claimed invention.11 Such a patent is invalid. Likewise, if a patent is granted that lists one or more persons who were not actually inventors, then he would not have invented all of the subject matter sought to be patented since some of the listed inventors would not actually be inventors (this is referred to as misjoinder ). Such a patent is also invalid. If this seems a harsh remedy for what can be a difficult determination to make (as we soon will see), then you will be relieved to know that mistakes in inventorship can be corrected both before and after issuance of the patent. 

The specific circumstances under which corrections may be made are provided for in 37 CFR 1.48 and in brief depend on whether the correction is after the oath/declaration of inventorship have been filed (1.48 a), the correction is due to a change in claim scope during prosecution of a nonprovisional patent application (1.48 b and c), or the correction is adding or deleting inventors from a provisional application (1.48 d and e). 

USPTO requesting a suspension of the rules.13 As an alternative to the correction of inventorship provisions provided for under 35 U.S.C. 116, applicants may also file a continuation application wherein they simply execute a new oath/declaration of inventorship listing the correct inventors.14... 

From the decision in Frank s, its clear that even when inventorship might be correctable under 256, the issue of inequitable conduct may be dispositive where the court finds deceptive intent. 

The selection of a proper inventor entity is still a serious consideration despite the liberality in changing inventors permitted by the statute. The validity of a patent is most in danger with a single inventor named as a wrong inventor or if any inventor entity, sole or joint, is deliberately misnamed for any reason. The courts in general take a more serious view of an omitted joint inventor rather than one added who is not in fact a joint inventor. There is heavy presumption that the inventors named in the patent are the correct ones. Many courts do not like to see a patent attacked because of improper inventorship and such courts regard this merely as a technical defense. In general, if there is any doubt, it is recommended that the patent solicitor select a joint inventor entity rather than a sole inventor entity. 

Inventorship determination is not always straightforward and simple in today s research environment. However, to make these correct determinations, certain questions are asked. Did the person do only routine work or experiments as directed by another, or did he or she contribute something more Was the invention completed because of the specific activity of this person Did this person proceed beyond specific directions In today s modern pharmaceutical research atmosphere, in which teams are involved in the discovery and development processes, the patent attorney may find the determination of the correct inventorship a very difficult aspect in the preparation of a patent application. In a 1972 decision, U.S. District Court Judge Newcomer made the following observation ... 

PJatent departments look forward with dismay to. .. disputes about inventorship (Grubb, 1982). Disputes arise for several reasons, and, in large companies, they make the task of ascertaining inventorship one of the thorniest aspects of patent practice. The duty falls to patent attorneys, who rely on the signed, dated, and witnessed documents known as disclosures or records of invention. These records, kept preferably in bound, numbered notebooks, are succinct histories prepared by some inventors when they conceive their ideas. Correct inventorship is crucial to the validity of U.S. patents, which differ in this way from grants issued by other countries. 

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