The Importance of Correct Inventorship

Journal of Intellectual Property Law Volume 7 | Issue 1 Article 7 March 1999 The Importance of Correct Inventorship Rivka Monheit Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Rivka Monheit, The Importance of Correct Inventorship, 7 J. Intell. Prop. L. 191 (1999). Available at: https://digitalcommons.law.uga.edu/jipl/vol7/iss1/7 This Notes is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Monheit: The Importance of Correct Inventorship THE IMPORTANCE OF CORRECT INVENTORSHIP I. INTRODUCTION Based on the Constitution's grant of power to Congress to promote science, a patent can be issued only to its inventors.' If the patent application or the issued patent contains an incorrect listing of inventors, the patent could be invalid.2 Further, even if inventorship is corrected,3 the patent may be practically invalid against a particular alleged infringer. The latter situation is best illustrated by Ethicon, Inc. v. United States Surgical Corp.4 Because inventorship in Ethicon, Inc.'s (Ethicon) patent was incorrectly determined and stated at the time the patent issued, United States Surgical Corp. (U.S. Surgical) was able to get a license to the unnamed inventor's rights in the invention.' The court permitted correction of inventorship, thus supporting patent validity; however, because the non-joined inventor had granted a license to U.S. Surgical, Ethicon could not sue U.S. Surgical for infringement, making the patent "practically invalid" with respect to U. S. Surgical. Had Ethicon realized that the unnamed individual was an inventor, it could have avoided this problem by obtaining an assignment from this inventor. Thus, knowledge of who should be named on a patent application ' U.S. CONST. art. I, 5 8, cl. 8. "[Congress shall have the power] [t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." This requirement was integrated by Congress into the Patent Act. See 35 U.S.C. 55 101, 111 (1994) (requiring that patents be issued to an inventor, i.e., the person who invented the subject matter). 2 See infra Part V.A (discussing the requirement of lack of deceptive intent in the correction of inventorship errors). Though sections 116 and 256 of the Patent Act were amended in 1982 to allow for correction of inventorship in more situations, thus making correction an easier process, each section requires a lack of deceptive intent for the correction of inventorship errors. 35 U.S.C. S5 116,256 (1994). If deceptive intent is present on the part of the true "inventive entity," then correction will not be allowed and the patent will be invalid. See infra Part V (discussing 35 U.S.C. 55 116, 256 regarding correction of inventorship). Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456,45 U.S.P.Q.2d (BNA) 1545 (Fed. Cir. 1998), cert. denied 119 S. Ct. 278 (1998). ' Such a situation is less likely to arise in the case of a copyrighted work because copyright law states that in cases of works made for hire, the author is the employer, not the employee who created the work. 17 U.S.C. 5 201(b) (1994). In contrast, patent law does not recognize such a concept and thus employers typically require their employees to assign their rights in any patents which result from their employment to the employer (the assignee). If such assignments are not made, as occurred in Ethicon, Inc., the inventor may do as he pleases with his rights; he can even assign them to a competitor. Published by Digital Commons @ Georgia Law, 1999 1 Journal of Intellectual Property Law, Vol. 7, Iss. 1 [1999], Art. 7 J. INTELL. PROP.L. [Vol. 7:191 as an inventor can prevent complications during interferences and/or infringement proceedings. Further, a correct determination of inventorship may save one's patent from "absolute" or "practical" invalidation. This Note will examine (1)how inventorship is determined, (2) the effect of the 1984 Patent Act Amendments on determinations of joint inventorship, (3) the collaboration requirement of joint inventorship, (4) how inventorship is corrected in an issued patent and a pending application, (5) the rights of joint inventors as cotenants, and (6) a resolution of the problems presented by Ethicon, Inc. II. DEFINING INVENTORSHIP A patent is issued to an "inventorship entity," which can consist of either sole or joint inventor(s).6 Though inventorship has two parts, conception and reduction to practice, determinations of inventorship are based primarily on the conception of the invention! Therefore, sole inventorship occurs when one person conceives of the solution to a problem, which constitutes the subject matter of the invention, and joint inventorship results when more than one person contributes to the conception of the solution. Defining what constitutes "conception" will be examined below. A. CONCEPTION Determinations regarding conception often arise in interference proceedings' or as a defense to an accusation of patent infringement. In 6 "Joint inventors" can also be called "co-inventors." See Robert W. Harris, ConceptualSpecificity as aFactorin Determinationoflnventorship, 67 J. PAT. & TRADEMARK OFF. SOC'Y 315, 315-16 (1985) (stating that [f]requently, the fact of actual or constructive reduction to practice will not be a serious issue when patent counsel is evaluating an inventorship problem.... If, for example, counsel has drafted a patent application which adequately discloses and claims what appears to be a useful, novel and nonobvious invention, counsel can reasonably expect that reduction to practice will occur constructively on the date the application is filed. His... decision is accordingly focused upon conception) (emphasis in original); see also Sewall v. Walters, 21 F.3d 411,415, 30 U.S.P.Q.2d (BNA) 1356, 1358 (Fed. Cir. 1994) (stating that "[d]etermining 'inventorship' is nothing more than determining who conceived the subject matter at issue"). ' An interference may occur between two pending applications or between a pending application and an issued, unexpired patent. The Patent and Trademark Office (PTO) will call for an interference when "an application is made for a patent which.., would interfere with any pending application, or https://digitalcommons.law.uga.edu/jipl/vol7/iss1/7 2 Monheit: The Importance of Correct Inventorship 1999] CORRECT INVENTOR SHIP interferences, this determination must be made in two situations: (1) when a claim of priority based on prior conception is made, or (2) during a determination of the correct inventive entity. In infringement actions, defendants oft (...truncated)