Adding inventor to issued patent requires corrobrating evidence

If a person believes that he/she should have been named as an inventor on an issued patent, what does it take to get a court to correct inventorship?  My partner Josh Slavitt recently published an article addressing this question.  Josh’s article summarizes last week’s decision from the Federal Circuit in Tavory v. NTP, Inc., where the Court stated that the alleged inventor’s contribution must be more than ordinary skill in the art.  According to the court, that the alleged inventor must not have simply reduced the ideas of others to practice.  Also, the inventor’s own statements are not, by themselves, sufficient to establish inventorship.  Instead, correction of inventorship requires corrobrating evidence, such as contemporaneous documents or independent testimony.

Although the Court labeled its opinion as non-precedential, the opinion presents a useful summary of prior caselaw on the subject.  For the full text of Josh’s article describing the case, click here.

2 responses to “Adding inventor to issued patent requires corrobrating evidence

  1. With respect to this I work for a big company, so they automatically get a patent assignment. There is an existing patent granted in 1999. I had the same idea in 1985, and documented it with a signed and dated hand drawn print which could easily be validated. Also have about 20 pages of hand calculations. Keep in mind 1985 pre-dated computer aided design software. I have asked the company patent attorney to have my name added to the 1999 patent, and have wondered if this is a valid request.

    • You will want to review this with your attorney. Issues to consider include whether you were a co-inventor who collaborated with the company’s other inventors (which may favor you being named as a co-inventor), or whether you and the named inventors happened to separately invent similar things (which could mean that you are not a co-inventor). Also, given the timing, if the patent is expired the request may be moot. Your attorney may suggest additional questions to help him or her assess the validity of the request.

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