As we saw in the previous section, properly determining inventorship is important because inventorship determines initial ownership and all of the attendant financial considerations that go with it. Listing proper inventorship is also critically important because improper inventorship means that the inventors listed are not the actual inventors of the subject matter. If you are thinking to yourself, “so what?” then you need to recall that §102(f) of the U.S. patent code provides that: “A person shall beentitled to a patent unless . . . he did not himself invent the subject matter sought to be patented” (emphasis added). In §102(f), the word he refers to the inventive entity (all of the inventors) named on the patent. Thus if an inventor has been left off the patent (referred to as “non-joinder” of a proper inventor), then the listed inventors did not invent the subject matter of the claimed invention entirely “themselves” since they did not invent all of the subject matter of the claimed invention. Such a patent is invalid. Likewise, if a patent is granted that lists one or more persons who were not actually inventors, then “he” would not have invented all of the subject matter sought to be patented since some of the listed inventors would not actually be inventors (this is referred to as “misjoinder”). Such a patent is also invalid. If this seems a harshremedy for what can be a difficult determination to make (as we soon will see), then you will be relieved to know that mistakes in inventorship can be corrected both before and after issuance of the patent.
Inventorship correction before the issuance of the patent is preferred and is governed by 35 U.S.C. §116 of the U.S. patent law which provides in part:
Whenever through error a person is named in an application for patent as the inventor,or through an error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.
In practice, inventorship correction in a patent application depends on the circumstances for the correction, but in most cases requires a statement from each person being added and/or deleted that the error occurred without deceptive intent. Incases where an inventor or group of inventors refuse to sign such a statement or are otherwise not able to sign, it is possible for the assignee (assuming the invention has been assigned to another party such as an employer) to file a petition to the USPTO requesting a suspension of the rules.13 As an alternative to the correction of inventorship provisions provided for under 35 U.S.C. §116, applicants may also file a continuation application wherein they simply execute a new oath/declaration ofinventorshiplisting the correct inventors.
Corrections to an issued patent maybe made according to provision 35 U.S.C.§256 of the patent laws, which states 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 and such error arose without any deceptive intention on his part, the Commissioner 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. 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 Commissioner shall issue a certificate accordingly.
Due to the peculiar wording of the statute, §256 has been interpreted as applying a different standard of correction depending on whether the situation is one of misjoinder or non-joinder. In the case of misjoinder (“through error a person is named in an issued patent”), the correction may be made even when there was deceptive intent on the part of the mis-joined party (the improperly listed inventor).
In its statutory construction of §256, the Court in Stark v. Advanced Magnetics,Inc. held:
In sum, to avoid redundancy and give meaning to the entire section, this court construes the term “error” to extend to mistakes, whether deceptive and dishonest or merely uninformed and honest. Therefore, section 256 allows deletion of a misjoined inventorwhether the error occurred by deception or by innocent mistake. As well, the section allows addition of an unnamed actual inventor, but this error of non joinder can not betray any deceptive intent by that inventor. In other words, the statute allows correction in all mis joinder cases featuring an error and in those cases where the unnamed inventor is free of deceptive intent.
Using this interpretation of §256, we might come to the conclusion that most cases of improper inventorship can be corrected without invalidating a patent. For example,deceptive intent on the part of an improperly listed inventor could be corrected according to §256. This means that one who lied about his or her contributions to be listed as a co-inventor could still have the patent corrected to reflect the true inventorship. Likewise, a nonjoinder error resulting from an inventor or group of inventors who deceived the patent office to keep another inventor or group of inventors from being listed on the patent could still be correctable under§256 since the deceptive intent was not by the non joined inventor (the clause reads “an inventor is not named in an issued patent and such error arose without any deceptive intention on his part”).Now that you appreciate the financial incentives that flow from inventorship, you also appreciate the possible motivation for someone to practice deception in order to be listed on a patent since that makes him a co-owner. Likewise, you can appreciate the motivation for an inventor or group of inventors to deceive the patent office to keep additional inventors from being listed on the patent. It’s interesting that §256 focuses only on deception by an individual to keep his own name off a patent, something true co-inventors do not often like to do.
The federal Courts have sometimes dealt with these apparent gaps in the inventorship correction statutes through findings of inequitable conduct17 as seen in the case of Frank’s Casing Crew & Rental Tools, Inc. et al. v. PMR et al. Technologies. This case relates to reissue patent 34,063 (the ’063 patent) originating from US 4,738,145(the ’145 patent). The invention disclosed and claimed in the ’063 patent has particular utility in the oil and gas drilling business and relates to a method of determining when two sections of pipe have linked up. The claim at issue in the appeal is the method claim 30:
30. A method of monitoring torque conditions during the make-up of a threaded tubular connection, wherein shoulder contact is formed in the threaded connection, comprising the steps of:
sensing the torque imposed on the connection during makeup;
monitoring the torque conditions during said step of sensing the torque to detect if a satis factory threaded connection is obtained;
establishing a supplemental torque level for an acceptable minimum torque differential after shoulder contact; and
displaying the sensed torque during make-up.
The named inventors on the patent were the Vincent brothers (Larry and Darrell) and Shaun field. During the course of the development of the technology in question,
the Vincent brothers, through their company Tubular Make-Up Specialists, Inc. (TMS), hired Peter Weiner as a consultant to help them develop torque monitoring instruments.Weiner was very experienced in torque monitoring and was a named inventor on several patents in the field. Before starting the TMS corporation the Vincent brothers had no experience in the torque monitoring business. The Vincent brothers, working through a law firm, filed the patent application that eventually became the ’145 patent, which was later reissued as the ’063 reissue patent; the patent did not list Weiner as an inventor. During the time that the Vincent brothers (acting through TMS) were preparing the patent application, the relationship between Weiner and TMS had deteriorated. Several years of Weiner invoices to TMS had gone unpaid and furthermore, TMS failed to redeem stock options exercised by Weiner that would have given Weiner a 25% share in TMS. Soon after the patent application was filed,the Vincent brothers settled their dispute with Weiner without telling him about the filing of the patent application. Shortly after issuance, the ’063 patent was licensed to PMR Services, Inc. who subsequently sought to enforce and/or license the patent toa number of other companies, including Frank’s Casing Crew and Rental Tools, Inc.(Frank’s). Frank’s, apparently not wanting to pay money to license the patent, then brought an action in the federal district court, arguing, among other things, that the’063 patent was invalid due to improper inventorship. Frank’s also argued that Weiner was the only true inventor and that the inventorship should be corrected to reflect that fact so that the patent, as corrected, would be valid. As it turns out, Frank’s had an interest in the patent being held valid and enforceable because Weiner had assigned any rights in the patent that he might have to Frank’s. Thus the best result for Frank’s would have been for the Vincent brothers to be removed as co-inventors and Weiner to be listed as sole inventor, and the patent be held valid and enforceable. Under such a scenario, Frank’s conceivably could have used the invention as well as enforced it against other parties.
During the course of the trial, the District Court found that Weiner was an “innocent co-inventor” since he was an inventor or co-inventor of a torque-monitoring device, the TMS-1000, which was the subject of the ’063 patent. According to the District Court, “Darrel [sic] and Larry Vincent deliberately concealed Dr. Weiner’s involvement in the conception of the invention . . . [and] engaged in a pattern of intentional conduct designed to deceive the attorneys and the patent office as to who the true inventors were.” The District Court inferred intent from the fact that TMS,in its settlement with Weiner, paid him the consultancy fees but did not recognize his stock options, which would have given him a 25% ownership share of TMS. Presumably, had Weiner known about the filing of the patent application, he may have had additional leverage in the negotiations and further, he may have been more interested in not bargaining away his equity position in the company due to the value of the
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