Advertisement

April 24, 2014

Section 256 Inventorship Claim Does Not Accrue Until the Patent Issues

Addressing challenges to inventorship under 35 U.S.C. § 256, the U.S. Court of Appeals for the Federal Circuit reversed a district court’s grant of summary judgment that a claim for inventorship was barred by laches, finding that a claim for correction of inventorship does not accrue until the patent issues.  Hor v. Chu, Case No. 211-1540 (Fed. Cir., Nov. 14, 2012) (Prost, J.) (Reyna, J., concurring).

Defendant Ching-Wu Chu, a professor of physics at the University of Houston, and plaintiffs Pei-Herng Hor and Ruling Meng worked together at the University of Houston physics research lab.  During the mid-1980s, Chu filed two patent applications relating to superconducting compositions.  The two patent applications eventually issued in 2006 and 2010, respectively, with Chu named as the sole inventor.  In December 2008, Hor filed a complaint against Chu, asserting a claim for correction of inventorship under § 256 of the earlier-issued patent.  In March 2010, Meng joined the suit also on a claim for correction of inventorship, and the suit was later amended in June 2010, after the second patent issued, to add claims for correction of inventorship under § 256 of the second patent.

For inventorship claims under § 256, a delay of six years after a claim accrues creates a rebuttable presumption of laches.  The district court granted summary judgment against Hor’s and Meng’s claims and held that laches barred their inventorship claims since they knew or should have known by as early as 1987 that they were not named inventors on the patent applications that ultimately issued as the patents at issue.  Hor and Meng appealed. 

The issue on appeal was whether the laches period for a § 256 claim begins to run before a patent issues when the omitted inventors knew or should have known prior to patent issuance that their names were omitted from the patent application.  Simply as a matter of statutory language, the Court concluded that the answer is “no.”

Section 256 creates a private cause of action to correct inventorship “[w]henever through error a person is named in an issued patentas the inventor, or through error an inventor is not named in an issued patent…” Accordingly, the Federal Circuit held that a § 256 claim for correction of inventorship cannot accrue until the patent actually issues.  In support of this conclusion, the Court reasoned that correct inventorship is often not definitively determined until the patent issues, due to the back-and-forth negotiation between the patentee and the U.S. Patent and Trademark Office (PTO) examiner.  In many cases, the Court stated, an omitted inventor may not know whether she has an inventorship claim until the examination concludes and the patent finally issues.

© 2014 McDermott Will & Emery

About the Author

Associate

D. Jeremy Harrison is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Houston office.  He focuses his practice on intellectual property matters.

713-653-1715

Boost: AJAX core statistics

Legal Disclaimer

You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  

Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 

Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.

The National Law Review - National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 If you would ike to contact us via email please click here.