An Omitted Inventor Can’t Correct Inventorship of a Patent Owned by a Government Agency

In a non-precedential opinion in Ali v. Carnegie Institution of Washington, [2016-2320] (April 12, 2017), the Federal Circuit affirmed the dismissal, on grounds of soverign immunity,  of Ali’s lawsuit to be added as a co-inventor on several of defendants’ patents. The district of Oregon court dismissed UMass on the ground that it is entitled to sovereign immunity under the Eleventh Amendment of the U.S. Constitution and transferred the case to the U.S. District Court for the
District of Columbia, where the court dismissed the case for want of an indispensible party.

Ali argued that the Oregon court erred in refusing to conclude that UMass waived sovereign immunity when, in return for federal funding under the Bayh-Dole Act.  The Federal Circuit noted that the question of Eleventh Amendment waiver is a matter of Federal Circuit law, and that a district court’s decision on sovereign immunity is subject to de novo review.  The Federal Circuit said that UMass waives sovereign immunity under only two circumstances: first, if the state on its own initiative invokes the jurisdiction of the federal courts; and second, upon a clear declaration by the state of its intent to submit to federal jurisdiction.  The Federal Circuit said that UMass’s alleged agreement to be subject to suit by the federal government under a contract controlled by and consistent with the Bayh-Dole Act did not operate as a “clear declaration” that it waived its sovereign immunity
as to Mr. Ali’s suit against it for damages arising from his alleged omission as a co-inventor of the patents-in-suit.

The net result is that it is impossible for an omitted inventor to correct inventorship of a patent that is at least partially owned by a government entity.

 

 

 

District Court Correctly Added Inventors Who Contributed to at least one Claim Element

In Vapor Point LLC. v. Moorhead, [2015-1801, 2015-2003] (August 10, 2016), the Federal Circuit affirmed the district court’s correction of inventorship, dismissal of the infringement action, and denial of a attorneys’ fees.

A person who alleges that he is a co-inventor of the invention claimed in an issued patent who was not listed as an inventor on the patent may bring a cause of action to correct inventorship in a district court under 35 U.S.C. § 256.  Inventorship is a question of law entitled to de novo review by this court.  All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.

The Federal Circuit agreed that the district court’s findings were sufficient to support its inventorship judgment. Co-inventors need not physically work together or at the same time, make the same type or amount of contribution, or make a contribution to the subject matter of every claim of the patent.  Inventorship is determined on a claim-by-claim basis.

The Federal Circuit said that inventorship and ownership are separate
issues.  The patent owner waived the Federal Circuit’s review of whether the added inventors had an obligation to assign the invention by affirmatively representing to the district court that resolution of the inventorship issue would dispose of the infringement issue.