Inventorship (Secs. 102(f), 256)

  • BASICS: “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). To be joint inventors, there needs to be collaboration or concerted effort. 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). See Coda 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).
    • AIA: No longer need to show lack of deceptive intent, to correct inventorship. 35 U.S.C. § 256 (AIA) (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 Cir. 04/05/16) (non-precedential) (“heavy” burden not met); Eli Lilly (Fed.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); 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. Accord Cardiaq (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.”)
  • 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).
  • TIPS: