The Court of Appeals for the Federal Circuit, which is the appellate court that has the final say on all patent issues, recently resolved a dispute among courts about how long a person has to assert an inventorship challenge to an issued U.S. patent.
Patents must list all persons who were responsible for conceiving the invention that was patented. When a person who is not listed on the patent claims to be an inventor, the law permits him or her to file a federal court action demanding to be added as an inventor. But federal patent law gives the challenger only six years to file an action, after which time any inventorship rights are forever lost. The question that the Federal Circuit recently answered was, when does the six years begin to run?
In the recent case of Hor v. Chu, No. 2011-1540 (Fed. Cir 2012) [Link] a gentleman named Hor was the only inventor identified on a patent that relates to an invention for superconducting certain chemical compositions. The application for the patent was filed in 1987 but the U.S. Patent and Trademark Office (“PTO”) did not grant the patent until June of 2006. Two other people who were not identified on the patent as inventors – named Meng and Chu – filed a federal lawsuit in 2008 requesting that the court add their names to the patent as co-inventors. A federal judge dismissed their claims because they were filed more than six years after the patent application was submitted. Meng and Chu appealed to the Federal Circuit, which reversed the lower court and found that Meng and Chu had not missed their six-year deadline.
The Federal Circuit held that the six-year time for filing an inventorship challenge did not begin to run until the patent was actually issued, which in this case was in 2006. This holds true even if the individuals seeking to be added as inventors knew long before the patent was issued that their names would be omitted. Thus, the Federal Circuit ruled that it did not matter that Meng and Chu knew as early as 1987 that Hor would be the only named inventor of the patent. Because the patent did not actually issue until June of 2006, they had until June of 2012 to file their lawsuit.
Bowie & Jensen’s patent prosecutors (Larry Guffey and Pamela Riewerts) can assist businesses and individuals with identifying and evaluating all possible inventors for an invention, and the firm’s patent litigation group can assist disgruntled inventors with their efforts to be properly listed on a patent. However – we caution that, in most cases it is more cost effective and efficient to assert inventorship rights before a patent is issued, through one of several methods that are available during the time that the PTO is still deciding whether to grant the patent.