Can Patents Be Invalidated for Failing to Identify the Correct Inventors Under the America Invents Act?
The America Invents Act ("AIA") will transition the United States to a "First Inventor to File" System in March 2013. Among its various changes to existing law, the AIA eliminates 35 U.S.C. � 102(f), which is the statutory basis for invalidating patents that fail to name the correct inventors.
The Act includes "derivation proceedings" to resolve claims that the inventors on a patent or application derived the claimed invention from another. However, those proceedings are intended to replace interferences and resolve disputes between competing patent applicants or patent holders. Thus, at first blush, the elimination of Section 102(f) appears to end invalidity defenses based on improper inventorship.
Not so fast. A closer look at the Patent Statute suggests that invalidity based on improper inventorship will survive the enactment of the AIA. For example, Section 256 of the Statute deals with correcting inventorship errors on issued patents. As amended by the AIA, the second paragraph of Section 256 reads as follows (emphasis added):
35 U.S.C. 256 Correction of named inventor.
(a) CORRECTION.-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, the Director 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.
(b) PATENT VALID IF ERROR CORRECTED.-The error of omitting inventors or naming persons who are not inventors shall not invalidate a patent 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 Director shall issue a certificate accordingly.
Thus, the amended language of Section 256 contemplates the invalidation of patents that fail to name the proper inventors. As is true currently, in certain cases a court may correct inventorship and save such patents from invalidation. Nevertheless, invalidation remains a possibility.
In addition, the Federal Circuit Court of Appeals previously held that case law predating the enactment of the soon-to-be eliminated 35 U.S.C. � 102(f) provided for invalidation of patents due to improper inventorship. Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). Nothing in the AIA evidences a clear intent to override such case law, so it will presumably remain good law.
There may also be an additional statutory basis for invalidating patents for failure to identify the correct inventors. Section 101 of the Patent Statute states that "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . . " 35 U.S.C. � 101 (emphasis added). Failure to comply with Section 101 is made a basis for invalidation under 35 U.S.C. � 282. Thus, Section 101 may provide further support for an accused infringer seeking to invalidate a patent for improper inventorship.
In view of the foregoing, even under the AIA it is important to ensure that the correct inventors are named on a patent application. The correct inventors are those who conceived of the subject matter of at least one claim. Unfortunately, we have seen instances where individuals have been added as inventors because of their position in an organization, or as a reward for their work or assistance in the commercialization of an invention. While such individuals can be rewarded by granting them an ownership interest in the patent via an assignment, they should not be named as inventors. Even under the AIA, such a practice can compromise the validity of the patents on which they are named.