Patent Invalidity

A recent Federal Circuit decision has settled the question of whether a patent can be invalidated under the America Invents Act for improper inventorship. The answer, the Court has now confirmed, is yes.

In Fortress Iron, LP v. Digger Specialties, Inc., the Federal Circuit addressed whether a patent could be found invalid under 35 USC § 101’s requirement that a patent be issued to “who[m]ever invents or discovers” the claimed subject matter.  The answer is not entirely surprising, but was somewhat in doubt because the AIA removed a provision (35 USC § 102(f)) that was used to invalidate patents for improper inventorship in the past.

In some cases, improper inventorship can be corrected judicially under 35 USC § 256. However, that is not possible if an unnamed inventor cannot be found and given notice by the court. In Fortress Iron the patent holder used the services of a Chinese manufacturer’s employee, and during discovery, it was determined that the manufacturer’s employee should have been named as a co-inventor. Unfortunately, the employee could not be located to provide notice of a judicial inventorship correction proceeding. Thus, inventorship error was not correctable, and the Federal Circuit held that the subject patent claims were invalid for improper inventorship.

This case reinforces how critical it is when working with third parties to ensure that they will cooperate in signing inventor declarations and to make sure they assign their rights to you (or the entity that will hold the patent rights). You must name the actual inventors and only the inventors on a patent application, and in the absence of an assignment, the named inventors own the patent rights.