By:  Rodger A. Sadler
Patent Litigation Counsel


Brief Summary

The Federal Circuit’s November 14, 2012 Hor and Meng v. Chu decision1 holds that the laches “clock” for filing a correction of inventorship action under § 256 of the Patent Act:

  • begins to run only upon issuance of the patent-in-question; and
  • never begins to run before issuance of the patent-in-question. 

This is the case even if the party seeking to correct inventorship knew or should have known of the basis for its potential correction of inventorship action prior to issuance of the patent. 

The decision is significant because:

  • this is the first time the Federal Circuit has considered and ruled on this specific issue;
  • it resolves a disagreement among district courts regarding the issue. 

Background

  1. Section 256 Correction Of Inventorship Actions and the Doctrine of Laches

Section 256 of the Patent Act creates a cause of action allowing a party to file an action asking a U.S. district court or the Patent Office to correct inventorship in an issued patent.  

However, if a party seeking to correct inventorship in an issued patent unreasonably delays filing a § 256 correction of inventorship action, that action may be barred by the doctrine of laches.  Under the doctrine of laches, a court may under certain circumstances bar an action by a party that has “slept on its rights” and unreasonably delayed filing its action. 

For example, if a party delays filing a § 256 correction of inventorship action for six years or more after the party knew or should have known of the inventorship issue, there is a rebuttable presumption that the action should be barred by the doctrine of laches. 

District courts have disagreed, however, regarding whether the laches “clock” for a § 256 correction of inventorship action:

  • can begin to run before issuance of the patent-in-question; or
  • can begin to run only upon issuance of the patent-in-question. 

This was the disagreement resolved by the Federal Circuit Hor and Meng v. Chu case.

  1. The District Court Lawsuit

In 2008, Pei-Herng Hor and Ruling Meng filed a § 256 correction of inventorship action against Professor Ching-Wu Chu.  In the action, Hor and Meng asked a Texas district court to add their names as inventors to two U.S. patents that listed Professor Chu as sole inventor.    

Hor and Meng both had worked with Professor Chu in the physics research lab at the University of Houston during the 1980s.    

Professor Chu moved for summary judgment that the § 256 correction of inventorship action of Hor and Meng should be barred by the doctrine of laches.  Professor Chu argued that Hor and Meng:

  • knew or should have known that they were not named as inventors by as early as 1987, when the patented inventions were conceived, and when the applications for the patents were prepared and filed with the Patent Office;
  • unreasonably delayed filing their § 256 correction of inventorship action until 2008, 21 years later; and
  • therefore, the presumption of laches should apply.  

The Texas district court agreed with Professor Chu that the presumption of laches should apply to bar the § 256 correction of inventorship lawsuit because Hor and Meng did not file their lawsuits until well more than 6 years (21 years to be precise) after they knew or should have known of the basis for their correction of inventorship action. 

Because Hor and Meng presented no evidence to rebut the presumption that the laches bar should apply, the district court entered summary judgment in favor of Professor Chu.

The district court reasoned that Hor and Meng could and should have sought to correct inventorship by relying on Patent Office procedures during the many years the patent applications were pending.  For example, there are certain circumstances under which a party may petition the Patent Office to correct inventorship in a pending patent applicationSee, e.g., § 116 of the Patent Act.

  1. The Appeal To The Federal Circuit

Hor and Meng then appealed to the Federal Circuit, arguing that the Texas court had erred in holding that the laches “clock” for their § 256 correction of inventorship action started running before the Chu patents had issued. 

The Federal Circuit agreed with Hor and Meng and reversed the district court’s entry of summary judgment. 

The Federal Circuit held unequivocally that “A § 256 claim for correction of inventorship does not accrue until the patent issues.” 

In reaching its conclusion, the Federal Circuit explained why a failure to challenge incorrect inventorship in a pending patent application should not be, and is not, a bar to relying on a § 256 correction of inventorship lawsuit after issuance of the patent-in-question.  Among other things, the Federal Circuit noted that:

  • correction of inventorship in a pending patent application under § 116 requires consent of all unnamed and named inventors, among other things, which would be difficult, if not impossible, to obtain in situations involving disputed inventorship;
  • “. . . while . . . the prompt resolution of inventorship disputes certainly is a desirable goal, there may be circumstances in which it would be inefficient to require an omitted inventor to initiate an inventorship dispute while the application is still pending.  Throughout the back-and-forth negotiation between the patentee and the PTO examiner, the original claims are routinely narrowed or even cancelled. Thus, in many cases, an omitted inventor may not know whether he or she has a cognizable inventorship claim until the examination concludes and the patent finally issues.”

Conclusion

The laches clock for a § 256 correction of inventorship action cannot begin running before issuance of the patent-in-question. 

This is true even if the party seeking to correct inventorship knew or should have known of the basis for its action years before issuance of the patent. 

However, once a patent issues, anyone contemplating filing a correction of inventorship § 256 correction of inventorship action should make every effort to do so without undue delay.  This should significantly reduce the risk of the action being barred under the doctrine of laches.

Also, keep in mind that under certain circumstances it may be possible to ask the Patent Office to correct inventorship before a pending application issues as a patent.  When available, this route may be less expensive and time consuming than a district court § 256 correction of inventorship action.