I invented that! Challenging inventorship to a U.S. patent

A recent court decision sheds light on a not-often-used section of the Patent Act:  Section 256, which provides a private right of action for correcting inventorship of an issued patent.

Section 256 states that:

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.

This process is not limited to non-contested proceedings.   Section 256 also creates a private right of action for correcting inventorship by stating:

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

In Pei-Herng Hor v. Ching-Wu “Paul” Chu (No. 2011-1540, Nov. 14, 2012), two plaintiffs filed suit against a patent holder and asserted that they were co-inventors whom the defendant should have named on two patents.  The patents were filed in 1986 and 1987 but did not grant until 2006 and 2010.  The plaintiffs filed their suit in 2010, and in its defense the patent holder argued that the claims were barred by laches since the plaintiffs should have known of the claims when the patents were filed in the 1980s.

The Court noted that “for inventorship claims under § 256, a delay of six years after a claim accrues creates a rebuttable presumption of laches.”  However, the Court found that the laches clock cannot start until the patent grants.  Thus, despite a potential delay of over 20 years, the Court permitted the plaintiffs’ claims to proceed.

Although not an issue in the Pei-Herng Hor case, other factors that are relevant to a suit for correction of inventorship include:

• The failure to name a co-inventor most be established by clear and convincing evidence.  C. R. Bard, Inc. v. M3 Systems, Inc.,  157 F.3d  1340, 1352 (Fed. Cir. 1998).  This can be  a high hurdle for cases where the documentary evidence is thin.
• Correction of inventorship requires collaboration with the named inventor.  A person claiming to have independently invented the invention cannot bring suit under § 256.   See, e.g., Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998).
• The inventor must have contributed to the conception of the invention, not merely its reduction to practice.  Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985).
• The challenger’s contribution must be more than a de minimis amount.  “[A] joint inventor must contribute in some significant manner to the conception of the invention.”  Fina Oil and Chemical Co.  v. Ewen, 123  F.3d 1466, 1473 (Fed. Cir. 1977).