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© 2002, Gallagher & Dawsey Co., LPA
November 2002
The United States Court of Appeals for the Federal Circuit (CAFC)
recently held that a patent was unenforceable because it incorrectly
identified the inventors. In Frank's Casing Crew & Rental Tools, Inc.
v. PMR Techs. Ltd. the inequitable conduct of two named inventors in
failing to properly name a co-inventor resulted in the
unenforceability of the patent. Therefore, even the innocent unnamed
co-inventor lost all rights in the invention.
In this case, two brothers, the Vincents, owned a company that hired
Peter Weiner as a consultant. The Vincents, John Shaunfield, and
Weiner invented a method and apparatus for monitoring torque while
connecting threaded tubular goods, which is particularly useful in the
oil and gas drilling industry. The Vincents then applied for, and
subsequently obtained, a patent on the invention, purposely not naming
Weiner as a co-inventor in an effort to hide his involvement in the
invention.
Upon issuance, PMR Services, Inc. (PMR) obtained a license to the
patent and attempted to sell licenses to a number of oil and gas
companies. PMR also sent over 300 "cease and desist" letters to
Louisiana residents. An action was filed by a number of the letter
recipients in the Western District of Louisiana seeking a declaratory
judgment that the patent was invalid, unenforceable, and not
infringed. The District Court held that the patent was unenforceable
because of the Vincent's inequitable conduct. PMR then appealed to the
CAFC. The CAFC affirmed the District Court's holding that the patent
was unenforceable due to the inequitable conduct of deliberately
concealing a co-inventor.
Here the deceitful conduct of the Vincents cost the innocent
co-inventors the right to enforce the patent and cost the numerous
other parties with ties to the invention considerable sums of money in
litigation. Numerous additional actions undoubtedly arose from the
damages
Patent applicants should learn a valuable lession from this holding.
No matter how strained relationships between co-inventors may be, hard
feelings cannot get in the way of properly identifying co-inventors in
a patent application. The key issue is one of intent: While true
oversights in naming inventors can be corrected under various
circumstances, if a deliberate decision is made to omit naming a true
inventor in a patent application, the patent that later issues is
fatally invalid and cannot be corrected by any means. The penalties
for misrepresentation to the Patent and Trademark Office are extremely
harsh! |
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