© 2003, Gallagher & Dawsey Co., LPA
While we have often stressed the importance of correctly naming
inventors, it is possible to correct the inventorship designations,
even on an already issued patent.
37 C.F.R. §1.324 enables the Commissioner, upon proof of facts and on
application of all the parties and assignees, to issue a certificate
correcting such an error. The error of omitting inventors or
incorrectly naming persons who are not inventors does not invalidate a
patent in which such error occurred if it can be corrected as provided
by §1.37. Furthermore, a court before which such an issue is called in
question may order correction of the patent on notice and hearing of
all parties concerned and the Commissioner will then issue a
certificate of correction by court order.
What are the important facts? First and foremost, the error or
omission must have been without deceptive intent. Of course, this
rules out deliberate decisions on inventorship. These deliberate
decisions may be ascribed either to the persons presently named as the
inventor or to the party seeking correction. Neither the patent code
nor the rules of the Patent and Trademark Office require that an
omitted inventor of an issued patent must diligently bring a lawsuit
to correct inventorship, or be barred from doing so in the future.
Certain circumstances, for example an inventor who knows but does
nothing to make a correction, or the need to correct inventorship to
proceed with an interference hearing, may bar later claims to joint
inventorship. Diligence in filing suit to correct inventorship is
measured from the date that the party had actual notice of the
patent's issuance, that is, not only had reason to know, but actually
knew of the issuance.
In addition, under 35 U.S.C. § 256, "error" also does not encompass
gross negligence in avoidance of correction on the part of responsible
knowledgeable parties having full notice of the facts and their
Certificates of correction to name correct inventors can be issued to
correct misjoinder (deletion of a non-true inventor), nonjoinder
(failure to name a true inventor) and for substitution (removing one
sole inventor in favor of another sole inventor).