Chapter §8.04 Correction of Inventorship

• Jurisdiction: United States

§8.04 Correction of Inventorship

Historically, patent law's requirement that the persons who truly invented be named as inventors on a patent (and correspondingly, that those who did not truly invent not be named) was expressed through 35 U.S.C. §102(f), which provided that "[a] person shall be entitled to a patent unless—he did not himself invent the subject matter sought to be patented."¹¹¹ Before the 1952 Patent Act, courts routinely invalidated patents under §102(f) for failing to properly name inventors.¹¹² Although §102(f) on its face would appear to preclude the grant of a patent (or invalidate an issued patent) when a person who did not make an inventive contribution was nevertheless named as an inventor (a "misjoinder" situation), that result did not necessarily follow after passage of the 1952 Patent Act.

Enactment of §§116 and 256 in the 1952 Patent Act ameliorated the potentially harsh result of §102(f) by allowing for liberal correction of inventorship in pending patent applications and issued patents, respectively. These statutory provisions also apply when a person who was not named as an inventor, but should have been—a situation termed "non-joinder"—seeks to be added as a named inventor.

[A] Correction of Inventorship in Pending Patent Applications

Section 116 of the Patent Act provides that "[w]henever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes."¹¹³ The procedures for requesting correction of inventorship under §116 are detailed in USPTO Rule 48.¹¹⁴

[B] Correction of Inventorship in Issued Patents

[1] Section 256 Actions Generally

The correction of inventorship in issued patents (rather than pending patent applications) proceeds under 35 U.S.C. §256. The Federal Circuit has broadly interpreted §256 "as a 'savings provision' to prevent patent rights from being extinguished simply because the inventors are not correctly listed."¹¹⁵

The Federal Circuit views §256 as creating an independent cause of action in federal court by which the plaintiff can seek correction of inventorship.¹¹⁶ "A person who alleges that he is a co-inventor of the invention claimed in an issued patent who was not listed as an inventor on the patent may bring a cause of action to correct inventorship in a district court under 35 U.S.C. §256."¹¹⁷ As amended by the America Invents Act of 2011, §256 provides for such actions under subsection (b). The statute reads in full:

§256. Correction of named inventor

(a) Correction.—Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

(b) Patent valid if error corrected.—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. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly. ¹¹⁸

When all parties and persons having ownership of a patent agree to correct inventorship, filing a lawsuit in federal court is not necessary. Rather, the individuals involved may apply to the USPTO Director for a certificate correcting inventorship in accordance with subsection (a) of §256.¹¹⁹

When all individuals concerned do not agree to modification of inventorship, the proponent of correction must proceed in federal court under subsection (b) of §256. Despite its ameliorative nature, the §256 remedy of correction is not automatically obtained. The presumption of validity of an issued patent encompasses a presumption that those persons named as inventors on the face of the patent are the true and original inventors. An individual seeking to modify inventorship of an issued patent bears the heavy evidentiary burden of showing that the stated inventorship is incorrect by clear and convincing evidence.

[2] Standing Requirement for Section 256 Actions

Article III of the U.S. Constitution governs standing to sue for correction of inventorship under 35 U.S.C. §256, just as it does for any other type of action in federal court; "[s]tanding to sue is a threshold requirement in every federal action."¹²⁰ Article III empowers a federal court to hear only "[c]ases" and "[c]ontroversies."¹²¹ The case-or-controversy requirement is understood to mandate that a litigant has "standing" to invoke the power of a federal court.¹²² " 'In essence the question of standing is whether the litigant is entitled to have the court decide the merits of the dispute or of particular issues.' "¹²³

More specifically, to establish constitutional standing a plaintiff must demonstrate that he suffered an injury-in-fact, that the injury is traceable to the conduct complained of, and that the injury is redressable by a favorable decision.¹²⁴ The alleged harm must be concrete and particularized.¹²⁵

Many inventors employed by corporations sign agreements when hired, assigning to the employer all right, title, and interest in any inventions made during the employment. When such an employed (or formerly employed) individual has no legal interest in her employer's patents because of a prior assignment, has the current/former employee suffered some other type of "concrete and particularized" harm when she is not named as a co-inventor?

In Shukh v. Seagate Tech. LLC,¹²⁶ the Federal Circuit in 2015 held as a matter of first impression¹²⁷ that a financial interest in the disputed patents is not required to bring a §256 action. Rather, "concrete and particularized reputational injury [without more] can give rise to Article III standing" in a §256 action.¹²⁸ The Shukh court reasoned that

[a]s we noted in Chou [Chou v. Univ. of Chicago, 254 F.3d 1347 (Fed. Cir. 2001)], "being considered an inventor of important subject matter is a mark of success in one's field, comparable to being an author of an important scientific paper." 254 F.3d at 1359. We reasoned that "[p]ecuniary consequences may well flow from being designated as an inventor." Id. This is particularly true when the claimed inventor is employed or seeks to be employed in the field of his or her claimed invention. For example, if the claimed inventor can show that

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