Correction of Inventorship

Inventorship is a legal question requiring that each named inventor have contributed to the conception of at least one claim: CONCEPTION: the touchstone of inventorship is CONCEPTION — the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention; Burroughs Wellcome Co. v. Barr Labs (Fed. Cir. 1994): conception must be complete such that 'only ordinary skill would be necessary to reduce the invention to practice'; EACH CLAIM IS SEPARATE: a person who contributes to the conception of the subject matter of at least one claim is an inventor; different claims can have different subsets of inventors; JOINT INVENTORSHIP: co-inventors must each contribute to the conception of the invention; they need not contribute equally or even to the same claim; they need not work at the same time or in the same place; § 116: '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'; WHO IS NOT AN INVENTOR: a person who only reduces the invention to practice is not an inventor (they performed the work ordered by the inventor); a person who only contributes financially (investor, employer) is not an inventor; a person who makes suggestions that are not incorporated into any claim is not an inventor; a supervisor who merely oversees the work but does not contribute to conception is not an inventor; INVENTORSHIP vs. OWNERSHIP: inventorship (who conceived the invention) is distinct from ownership (who holds the patent rights); an employer can own a patent even if the named inventors are employees.

Incorrect inventorship — either naming someone who is not an inventor (misjoinder) or failing to name someone who is an inventor (nonjoinder) — has serious legal consequences: PRE-AIA LAW: under pre-AIA law, incorrect inventorship could render a patent INVALID and UNENFORCEABLE if the error was accompanied by deceptive intent (fraud on the patent office); even without deceptive intent, a patent with incorrect inventorship could not be enforced until corrected; AIA CHANGE: the AIA removed the requirement that inventorship errors be 'unintentional' to be correctable and made it harder to invalidate a patent for inventorship errors alone; 35 U.S.C. § 256: a patent may be corrected for inventorship without penalty if the error arose without deceptive intent on the part of the inventor(s) being added or omitted; INVALIDITY IF DECEPTIVE INTENT: if an inventor was knowingly omitted to remove their patent ownership rights or strip them of royalties, the error may constitute inequitable conduct; inequitable conduct (deceptive intent + material misrepresentation) renders the patent unenforceable; LITIGATION CONTEXT: in patent infringement litigation, defendants frequently challenge inventorship to: (a) assert the named inventors didn't conceive the claimed subject matter; (b) potentially add an omitted inventor to create ownership interests that defeat the plaintiff's standing; (c) challenge the patent's validity; CORRECTION PREVENTS INVALIDITY: proactively correcting a known inventorship error before litigation removes the issue; an uncorrected error that is discovered in litigation creates a serious vulnerability.

Correcting inventorship during prosecution (before the patent issues) is relatively simple: PENDING APPLICATION PROCEDURE: to add or remove an inventor during prosecution: (1) FILE A PETITION: file a petition under 37 C.F.R. § 1.48 requesting correction; (2) PETITION FEE: pay the required petition fee; (3) DECLARATION: the applicant(s) must submit a new inventor's oath or declaration (37 C.F.R. § 1.63 or 1.64) from any inventor being added; (4) STATEMENT: if an inventor is being removed, a statement under § 1.63(d) from the remaining inventors and the removed inventor (if available) is often helpful; (5) CONSENT: the assignee (if any) must consent to the correction; NO DECEPTIVE INTENT REQUIRED: the petition does not require a showing that the error was made without deceptive intent for pending applications — this is a simpler standard than for issued patents; TIME TO FILE: the petition can be filed at any time during prosecution before the application issues; if the issue fee has been paid, a petition must be filed very promptly or the application may need to be withdrawn from issue; DESIGN PATENTS: the same procedure applies to design patent applications; PROVISIONAL APPLICATIONS: provisional applications do not require named inventors but should name the inventors for documentation purposes; corrections to a provisional's inventorship are made by filing a replacement provisional.

Correcting inventorship after a patent has issued requires a different procedure than for pending applications: STATUTORY BASIS: 35 U.S.C. § 256: '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 this error'; PROCEDURE: (1) FILE A REQUEST: file a request for Certificate of Correction under 37 C.F.R. § 1.324; (2) REQUIRED DOCUMENTS: (a) statement by the applicant of the facts verifying inventorship; (b) oath or declaration by any new inventor being added; (c) statement by each inventor being removed (if available); (d) consent of each assignee; (3) FEE: pay the Certificate of Correction fee (approximately $240 large entity / $120 small entity); (4) NO DECEPTIVE INTENT: the request must state that the error occurred without deceptive intent; RESULT: if approved, the USPTO issues a Certificate of Correction that becomes part of the patent file; COURT-ORDERED CORRECTION: if the parties cannot agree (e.g., a co-inventor disputes being removed), a district court can order correction of inventorship under § 256; common in inventor disputes where one party sues for a court order to be added as an inventor; RETROACTIVE EFFECT: the correction relates back to the original issue date of the patent; the corrected patent is treated as if it was properly named from the beginning.

Disputes over inventorship often arise in the context of business relationships and patent ownership disputes: COMMON SOURCES OF INVENTOR DISPUTES: employer-employee disputes (employee claims to be an inventor; employer claims employee merely implemented instructions); collaborator disputes (two companies co-develop technology; each claims sole inventorship); academic research (multiple researchers contribute; allocation of inventorship is contested); startup disputes (co-founders later dispute who conceived the claimed invention); STANDARD OF PROOF: inventorship disputes require CLEAR AND CONVINCING evidence to establish inventorship (or to establish that a named inventor is not the true inventor); this is a high standard — more than a preponderance but less than beyond a reasonable doubt; CORROBORATION REQUIREMENT: an inventor's own testimony about conception is insufficient on its own; it must be corroborated by independent evidence such as: (a) laboratory notebooks, emails, and technical documents; (b) third-party witnesses who observed the conception; (c) prototype records, computer timestamps; JOINT INVENTOR THRESHOLD: the claimed joint inventor must show they contributed to the CONCEPTION of at least one claim — not just to research, development, or suggestions; Fina Oil & Chemical Co. v. Ewen (Fed. Cir. 1994): merely providing equipment or materials without contributing to conception does not create inventorship; OWNERSHIP IMPLICATIONS: if an omitted co-inventor is successfully added, they acquire co-ownership rights in the patent; a co-owner can independently exploit the patent (license it, even for free to competitors) without the other owner's consent; this is a powerful weapon in litigation — a defendant who can establish co-inventorship may acquire rights that defeat the plaintiff's infringement claim.