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All Questions in Patent Process >> Inventorship dispute in a patent application

Inventorship dispute in a patent application

Posted by Anonymous . updated on 2/26/2009
What happens when you have an inventorship dispute in a patent application?  For example, inventor A files a patent application.  Inventor B is a true joint inventor yet is not named in A's application.  A refuses to acknowledge that B is a joint inventor, claiming that only A invented all elements of all claims.  B insists that contrary to what A says, B is a true joint inventor.  What can B do to correct inventorship and/or protect his rights?

The case law is "fairly" settled that although an omitted joint inventor can bring a declaratory judgment action in federal court to correct inventorship in an ISSUED PATENT under 35 U.S.C. 256, correction of inventorship in a patent APPLICATION is the exclusive province of the PTO pursuant to 35 U.S.C. 116.  Unfortunately, according to 37 CFR 1.48, for the PTO to correct inventorship in an application the PTO requires that all actual inventors must sign an oath or declaration.  In this case, for the PTO to correct inventorship, both A and B would have to sign a declaration listing both of them as joint inventors.  Obviously, A will be unwilling to do this.  (see Stevens v. Broad Reach Companies, L.L.C.  2006 WL 1556313, 1 (W.D.Mo.) (W.D.Mo.,2006) if you are interested in reading a case which discusses, but does not resolve this issue).


So what can B do?  He can't bring a D.J. action in fed court.  He can't get the PTO to correct inventorship since A is unwilling to sign a new declaration listing B as a joint inventor.  Does he have any other options?

One thought would be to initiate an interference.  However, I am of the understanding that an interference is used to establish who invented something first, as opposed to determining who is a true joint inventor in an inventorship dispute (I must admit though that I have little to no experience with interference practice).

Thoughts?
Answers (4)
 
Wiscagent
One approach is for inventor "B" to document his or her inventorship to the fullest extent practical ... and then do nothing.  IF the patent is eventually granted, and IF the patent includes claims to which "B" contributed, and IF it appears that there is money to be made in from the patent, then "B" can look into suing "A".

I'm not suggesting that the approach above is the best strategy, but it's worth consideration.

 
 
ChrisWh...
Off the top of my head, it's early and I haven't yet had my morning coffee...

If A knew that B was a co-inventor, but yet A executed a Declaration that stated A was the sole inventor, then A could be in serious trouble for perjuring themselves on the Declaration, which might be construed as Fraud on the Office, and probably grounds for invalidating any patent issued on the application, I think.

B might consider filing her own patent application as a sole inventor, which claims only the inventive contribution that B made.  Then, when the PTO rejects B's case based on A's disclosure, B could assert derivation, and could at that stage file a rightful writing that could seriously damage A's position. 

Best is to probably explain to A the effect of perjuring onesself before the PTO, and the potential downsides to A should B elect to file their own application.
 
 
 
Gauge
Quote from: ChrisWhewell on 05-29-08 at 07:46 am
Off the top of my head, it's early and I haven't yet had my morning coffee...

If A knew that B was a co-inventor, but yet A executed a Declaration that stated A was the sole inventor, then A could be in serious trouble for perjuring themselves on the Declaration, which might be construed as Fraud on the Office, and probably grounds for invalidating any patent issued on the application, I think.

B might consider filing her own patent application as a sole inventor, which claims only the inventive contribution that B made.  Then, when the PTO rejects B's case based on A's disclosure, B could assert derivation, and could at that stage file a rightful writing that could seriously damage A's position. 

Best is to probably explain to A the effect of perjuring onesself before the PTO, and the potential downsides to A should B elect to file their own application.
 

Thanks for the response.  You provide some very good insight.  No doubt the A's patent, should it issue, would be invalid if B were to be able to prove his inventorship.  Of course, invalidation of the patent is not B's true goal. 

B filing his own patent application claiming only his inventive contribution may be the only real option.  However, it leads me to a basic question that I embarrassingly don't know the answer to:

Assume inventor A invented elements X and Y, and inventor B invented element Z.  Inventor A's patent application lists A as the sole inventor and claims elements X and Y in claim 1, and elements X, Y and Z in claim 2 (I know this would make A's patent invalid).  Inventor B then files a patent application directed towards his contribution, Z.  However, Z can only be claimed in combination with X and Y.  Therefore, B files an application listing B as the sole inventor with elements X, Y and Z in claim 1. 

Does B need to list A as a joint inventor since inventor A invented elements X and Y?
 
 
DJoshEsq
I handled a very similar case a few years ago. 

What we did was...

1) Send a certified letter to the incorrectly named inventor along with a petition to correct inventorship asking that he sign the petition.
2) After he refused/did not respond, we file the petition to correct inventorship in the USPTO along with a petition under 1.183 requesting waiving the requirement that the inventor being deleted sign the peition.  In support of the 1.183 petition, we provided evidence of the correct inventor's sole inventorship.
3) Simultaneously, we filed an application listing only the correct inventor.

Notes - Be careful with the petition because you are on the border line of causing any resulting patent to be invalid due to inequitable conduct.  It is good to frame the petition as there is an honest dispute regarding inventorship (no deceptive intent on either inventors part....even though only lack of deceptive intent of inventor being added is required).
 
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