BASICS: “Whoever invents or discovers any new and useful … may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. “A person shall be entitled to a patent unless – … he did not himself invent the subject matter sought to be patented ….” 35 U.S.C. § 102(f) (pre-AIA). This provision “requires that a patent accurately name the correct inventors of a claimed invention.” In Re VerHoeff (Fed. Cir. 05/03/18). “‘Conception is the touchstone to determining inventorship.’ ‘[Conception] is ‘the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.’” Univ. of Colo. Found. (Fed. Cir. 09/03/03). “Conception is complete only when the idea is so clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” Burroughs Wellcome (Fed. Cir. 11/22/94). To be joint inventors, there needs to be collaboration or concerted effort. “Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” 35 U.S.C. § 116(a). Inventorship is a question of law, but proof of inventorship by unnamed inventor requires clear and convincing evidence. Gen. Elec. (Fed. Cir. 05/08/14). Reputational injury from being omitted as named inventor may convey standing. Shukh (Fed. Cir. 10/02/15) (vacating Summ. J. of no standing). SeeCoda Development (Fed. Cir. 02/22/19) (rev’g R. 12(b)(6) dismissal of correction-of-inventorship claim, based on sufficient factual allegations that named inventors copied claimed subject matter from the plaintiff).
Court May Order Patent Office To Correct Inventorship Errors: 35 U.S.C. § 256 (AIA) (Director may correct “error” in naming or omitting an inventor). “Our precedent provides that ‘error’ in § 256 includes ‘all varieties of mistakes—honest and dishonest’—rather than only unintentional inaccuracy.” Egenera (Fed. Cir. 08/28/20). The AIA did not narrow this meaning of “error” in § 256. Id.
AIA: No longer need to show lack of deceptive intent, to correct inventorship. 35 U.S.C. § 256 (AIA) (“The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section.”) (effective for proceedings commenced on or after Sept. 16, 2012).
Heavy Burden To Show Non-Joinder or Mis-Joinder: “There is a presumption that the inventors named on an issued patent are correct, so nonjoinder of inventors must be proven by facts supported by clear and convincing evidence. (‘The burden of showing misjoinder or nonjoinder of inventors is a heavy one.’)”; “What is required is ‘corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention.’” Univ. of Colo. Found. (Fed. Cir. 09/03/03); Meng (Fed. Cir. 04/05/16) (non-precedential) (“heavy” burden not met); Eli Lilly (Fed. Cir. 07/20/04); Bard Peripheral I (Fed. Cir. 02/10/12) (a party providing physical samples, some of which embodied invention, not sufficient to contribute in a significant manner to second party’s conception where first party did not then appreciate the invention or communicate to second party the key factor for creating successful product; aff’g jury verdict of no improper inventorship.); Bard Peripheral III (Fed. Cir. 01/13/15) (defense based on alleged joint inventorship not reasonable); Beriont II (Fed. Cir. 02/04/15) (no corroboration of testimony to support misjoinder).
Conception Of Method Of Making Compound May Suffice To Contribute To Conception: “Where the method [of making a compound] requires more than the exercise of ordinary skill, … the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. … conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it. Accordingly, this court holds that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.” Falana (Fed. Cir. 01/23/12).
Contributor Of Any Disclosed Means Of A Sec. 112(6/f) Element Is Joint Inventor: Contributor of any disclosed means of a means plus function element is a joint inventor as to that claim, Ethicon (Fed. Cir. 02/03/98).
To Be Joint Inventor, Must Collaborate And Make Significant Contribution To The Complete Invention, Not Merely Explain State Of The Art: “A group of co-inventors must collaborate and work together to collectively have a definite and permanent idea of the complete invention.” Vanderbilt (Fed. Cir. 04/07/10) (aff’g judgment that unnamed contributors were not joint inventors). “[T]o be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil (Fed. Cir. 09/02/97) (“[A] joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed.”); In Re VerHoeff (Fed. Cir. 05/03/18) (aff’g rejection of claims under Sec. 102(f) because sole applicant not sole inventor; contributor of “essential feature” of claimed invention is joint inventor). This requires more than merely exercising ordinary skill in the art—“a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known [in] the current state of the art.” Id.AccordCardiaq (Fed. Cir. 09/01/17) (non-precedential) (aff’g judgment based on advisory jury verdict adding unnamed co-inventors to patent; alleged co-inventor must made a contribution to conception of at least one claim “‘that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.’” Not enough to merely explain well-known concepts and/or the current state of the art.” But explaining non-public, secret Sec. 102(e) prior art may be enough.); Tavory (Fed. Cir. 10/27/08) (non-precedential); Nartron (Fed. Cir. 03/05/09) (one suggesting the sole element added by a dependent claim was not co-inventor where that element was in the prior art, adding it to this invention was within ordinary skill in the art, and contribution of that element “was insignificant when measured against the full dimension of the invention”).
One’s Contribution May Be Sufficiently “Significant” To Qualify As Co-Inventor Even If Is Prior Art To Claims: “Joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher’s contribution.” Dana-Farber (Fed. Cir. 07/14/20) (aff’g that two researchers who had shown expression of PD-L1 in human tumors and that PD-L1 expression causes tumor growth, qualified as co-inventors even though they did not participate in in vivo studies and even though claims allowed over provisional application of one of them). Holding “categorically that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention … would ignore the realities of collaboration, especially that collaboration generally spans a period of time and may involve multiple contributions.” Dana-Farber (Fed. Cir. 07/14/20).
Require Corroboration For Alleged Co-Inventor’s Contribution: “An alleged co-inventor’s testimony cannot, standing alone, provide clear and convincing evidence.” Caterpillar (Fed. Cir. 10/28/04) (upholding the inventive entities named on three patents).
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