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Correction of Inventorship 11/3/2009 11:41:31 AM EST Sung on Limitations on the Ability to Seek Correction of Inventorship Partner, Dewey & LeBoeuf LLP; Professor & Intellectual Property Law Program Director, University of Maryland School of Law
A key distinction of U.S. patent law from its international counterparts is the grant of exclusivity only to actual inventors. However, a third party may sue in the U.S. district courts to correct inventorship under 35 USCS § 256. Because standing to sue carries different considerations than inventorship, the ability of aggrieved inventors to seek redress may be impaired. In this Analysis, Lawrence Sung addresses this important issue and examines Larson v. Correct Craft, Inc., 569 F.3d 1319 (Fed. Cir. 2009), which held that the plaintiff lacked constitutional standing to assert his claims for correction of inventorship under § 256. Mr. Sung writes:
At the outset [of Larson v. Correct Craft, Inc.], the Federal Circuit noted that Larson's claims for declaratory relief, as he pleaded them, did not actually invoke § 256. The Federal Circuit therefore initially examined whether Correct Craft (in removing the case) and the district court (in exercising jurisdiction) correctly treated the declaratory-judgment claims as implicating § 256. And because Larson lost his ownership rights and any financial interest he had in the wakeboard-tower patents when he executed the assignments in favor of Correct Craft, the Federal Circuit also determined whether Larson, having not yet prevailed on his separate claim for equitable relief setting aside the patent assignments, nevertheless had standing to pursue a claim for correction of inventorship in federal court.
On the first issue, the Federal Circuit held that Larson's allegations under Florida state law, fairly construed, revealed that Larson sought a judicial determination that he, not [defendants] Todd or Snook, was the true and sole inventor of the wakeboard tower. In substance, that was the same relief that the patent statute provides in § 256, and in other contexts the Federal Circuit has treated requests for declaratory relief relating to inventorship as functional equivalents of actions formally brought pursuant to § 256. Given the true nature of Larson's declaratory-judgment claims, the Federal Circuit accepted that Larson pleaded an action for correction of inventorship pursuant to § 256.
On the second issue, however, the Federal Circuit found that Larson had affirmatively transferred title to the patents to Correct Craft, and he stood to reap no benefit from a preexisting licensing or royalties arrangement. In the Federal Circuit's view, Larson's only path to financial reward under § 256 in this case involved him first succeeding on his state-law claims and obtaining rescission of the patent assignments. The Federal Circuit reminded that it had addressed a similar issue in Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 F.3d 1567, 1571-72 (Fed. Cir. 1997), where the plaintiff had assigned away all his patent rights, but sued for patent infringement and also sought to rescind the assignments through claims brought under state law. The Federal Circuit reaffirmed in Arnold that questions of patent ownership are determined by state law and explained that the plaintiff lacked standing to pursue his infringement claim because, "absent judicial intervention to change the situation," he did not have an ownership interest in the patents.
(citations omitted)
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