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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.

© 2017 McDermott Will & Emery


About this Author

D. Jeremy Harrison, intellectual property Attorney, McDermott Will Emery

D. Jeremy Harrison is a partner 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.  Prior to joining the Firm, Jeremy served as a full-time judicial intern for the Honorable Lynn N. Hughes in the U.S. District Court for the Southern District of Texas.

Jeremy is experienced in preparing and prosecuting foreign and domestic patent applications in the mechanical, electrical, computer and chemical fields.  Jeremy has extensive experience working with...