By Ernest W. Grumbles III and J.R. Maddox I. Introduction
Behind every burst of technical innovation is a human inventor – someone
who claims to have discovered some new useful product or process. The frailties of human
patent drafters, sometimes the inventors themselves, are the subject of frequent debate in Markman
hearings. While patents may perish under scrutiny of the prior art, or be narrowed to the point of
inconsequence, what of the inventors themselves? Can problems with the inventors themselves
vitiate patent rights?
For example, what if an inventor perishes, loses mental capacity or goes missing
before filing for a patent? Are intangible property rights lost along with the body and mind of the
inventor? What about an inventor who refuses to sign a patent application? Or an inventor
who lays false or overstated claim to an invention to the detriment of the true inventor? This last
issue is especially troubling in that fraudulent inventorship can bar enforcement of a patent.
This article considers these various inventor problems, offers some practical
solutions to minimize their occurrence and previews some potential legislation that may eliminate a few
of the problems altogether.
II Problem Inventors
A. The Inventor Who Dies.
Imagine that TechnoCorp is in the final stages of development of a groundbreaking
new nano-tech product predicted to be highly lucrative. One of the company's promising young
electrical engineers invented the new product and has managed project development with a small
research team. Suddenly, the young engineer dies in a tragic boating accident, well before
TechnoCorp has filed a patent application for the invention or even obtained an assignment from the
engineer. Assuming the young engineer has sufficiently documented the new invention, has
TechnoCorp lost patent rights in its new nano-tech invention along with the life of its prized young
engineer?
The short answer is: No. Since at least the late 1800s, courts, and
later the Patent Office, developed processes to allow for pursuit of patent applications (whether not yet
filed or already in progress) following the death of inventors. See De La
Vergne Refrigerating Machine Co. v. Featherstone, 147 U.S. 209 (1893) (amended patent
application submitted by administrator of deceased inventor and accepted by PTO); Eagleton
Manufacturing Co. v. West, Bradley & Carey Manufacturing Co., 111 U.S. 490 (1884) (a
patent that was filed before inventor’s death, yet issued after his death to deceased inventor's
"heirs or assigns," declared valid).
Today, 35 U.S.C. § 117 allows the legal representative of a deceased inventor
to file a patent application if the inventor failed to file prior to death. 37 C.F.R. § 1.42
implements § 117 and states:
In the case of the death of the inventor, the legal representative (executor,
administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply
for and obtain the patent.
The heirs of the inventor may also make application for patent if there is no
administrator, if there is no will, or if the existing will did not appoint an executor.
See 37 C.F.R § 1.42 (2002). In a case such as this, the heirs should identify
themselves as the legal representative of the deceased inventor in the oath or declaration submitted
pursuant to 37 C.F.R. §§ 1.63 and 1.64.
Further, the inventor’s legal representative may continue prosecution after
the inventor’s death if the patent application is already on file. See C.F.R
§ 1.42 (2002). The representative must simply comply with the same terms and conditions
applicable to the inventor, i.e. signing an oath or declaration (this raises some potentially
interesting/troubling issues of personal knowledge and the duty of candor).
The legal representatives or heirs are not the only parties that may file a patent
application after an inventor’s death or continue prosecution of an application if the inventor dies
after filing. 35 U.S.C. § 118 allows a “person” to whom the inventor assigned,
or agreed in writing to assign, the invention, or one who shows a sufficient proprietary interest in the
patent, to file an application or to intervene in the prosecution of the application if the inventor dies.
See 35 U.S.C. § 118 (2005). In essence, if the young inventor
mentioned above was obligated, whether by common law or contract, to assign rights in the new nano-
tech invention to TechnoCorp (generally the case for inventors who work for a corporation),
TechnoCorp may file the patent application on the engineer’s behalf. Thus, no lost patent
rights.
Preventive Measures
To avoid uncertainty at a time of company loss, deal with issues of patent
preservation as part of regular procedure. Businesses should have critical R&D personnel
sign employment agreements with express obligations to assign patent rights in new technologies and
to assist in executing any related documentation. These agreements could also contain
provisions obligating the legal representative of the inventor, such as an executor, to assist the
employer in applying for and assigning patent rights to the employer. While such contract terms
may seem a bit redundant in light of the statutory provisions, clear expression of obligations will
minimize legal confrontations at an unwelcome time.
Further, businesses should perfect their ownership rights on a timely basis and
arrange for inventor execution of assignments as soon as it is appropriate, such as at the time of filing
patent applications, or pre-emptively, at the time of an employee departure from the business (by
choice). These steps, again, will avoid uncertainty and provide the business, as the assignee, the
right to commence or continue prosecution of patent applications if the inventor were to die.
B. The Inventor Who Loses Mental Capacity.
What if the mind, but not the body, of the inventor fails? How does the law
manage invention rights when an inventor becomes mentally incompetent, whether due to mental
illness or otherwise? The law formerly provided no relief. In Jenner v.
Bowen, 139 F. 556 (6th Cir. 1905), an insane inventor’s patent rights were lost because
there was no legal provision for anyone else to file a patent on his behalf before an upcoming public
use statutory bar date. As the Sixth Circuit noted in Jenner, “Congress made
no provision whatever whereby an inventor who becomes insane before filing an application could
obtain the benefit of his discovery.” Id. at 563. Strangely, if that
inventor had gotten an application on file before he lost mental capacity, the law would have allowed
the patent to issue to the inventor's guardian. See Whitcomb et al v. Spring
Valley Coal Co., 47 F. 652, 657 (N.D. Ill. 1891) (reissue patent issued to insane inventor's
guardian held valid).
Sensibly, the patent statutes now have provisions to deal with the mentally
incompetent inventor in order to preserve patent rights, whether owned by the inventor, the company
for which the inventor works, or the inventor’s heirs and assigns. 35 U.S.C.
§ 117 (2005). This § 117, which provides the remedy in the event of an
inventor’s death, also allows application for a patent, or intervention in the prosecution of a
patent application, when an inventor has lost mental competence.
§ 118, the catch-all business-driven section, also applies in the case of the
mentally incompetent inventor. This means a person to whom the inventor assigned or agreed in
writing to assign the invention, or who shows a sufficient proprietary interest in the patent, can file an
application or intervene in the prosecution of the application if the inventor is found to be insane.
See 35 U.S.C. § 118 (2005).
Preventive Measures
The steps outlined in the foregoing section on deceased inventors can also be
applied to mental incompetent inventors. Get assignment obligations documented and follow
through on assignment rights prior to or at the time of patent filing. Do not rely on §§
117 and 118 – get the obligations into contracts. And promote regular invention
documentation so that inventor work can be evaluated for patent protection (and, of course, to
preserve knowledge of the new technology).
C. The Inventor Who Will Not Cooperate or Cannot Be Found.
The patent code requires that when an invention is made by two or more persons
jointly, they shall apply for the patent jointly and each make the required
oath. Because inventors are human, they may, in fact, not cooperate in the prosecution of a
patent application or may simply become unavailable to assist (think of disgruntled or departed
employees). The patent statutes and regulations provide solutions to these thorny issues.
1. At Least One Joint Inventor Refuses to Cooperate or is
Unavailable.
Dealing with uncooperative or unavailable inventors involves a bit more paperwork
than with deceased or incompetent inventors, and the participating inventors must meet additional
requirements besides their oaths or declarations. The basic process is outlined in 37 C.F.R. 1.47
(a) and 35 U.S.C. 116, second paragraph, which require all available joint inventors to file an
application “on behalf of” themselves and on behalf of a joint inventor who refuses to
“join in an application.” If one inventor refuses to cooperate with the prosecution,
then the remaining inventors may make the application on his behalf. See
Pannu v. Iolab Corp., 155 F.3d 1344, 1349 n.3 (Fed. Cir. 1998) (“Various statutory
provisions deal with certain situations in which an inventor does not join in the application.”)
(citing 35 U.S.C. § 116 (1994) (“If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort, the application may be made by the other
inventor on behalf of himself and the omitted inventor.”)).
37 C.F.R. § 1.64 (2002) requires that all the participating joint
inventors sign an oath or declaration on behalf of the non-signing joint inventor. In
addition, for missing inventors, a statement of facts must be filed demonstrating the diligent effort
made by the remaining inventors to contact the missing inventor. Individuals with firsthand
knowledge of the information contained in the document should sign the statement of facts. The
signing inventor should include documentary evidence of his or her efforts, such as internet searches,
certificates of mailing, return mailing receipts, and cover letters of instructions with the statement of
facts whenever possible. Finally, the statement should include the last known address of the non-
signing inventor in accordance with Manual of Patent Examining Procedure § 409.03(e)
(2004).
In situations where an inventor refuses to cooperate in the prosecution of the
application, a proof of refusal must be filed. The proof of refusal must show that the inventor
understands exactly what he is being asked to sign and that he refuses to accept the patent application
papers. Manual of Patent Examining Procedure § 409.03(d). The proof of refusal
must also show that a complete set of the papers to be filed were sent to the inventor’s last
known address, or, if the inventor is represented by counsel, to counsel's address. The fact that
the patent application contains sensitive company information does not relieve the company of its
obligation to disclose the patent application in its entirety if the inventor is willing to receive it.
2. No Inventor Will Cooperate or is Available.
When no inventor can be found or is willing to cooperate, a “person”
with a demonstrated proprietary interest can apply for a patent “on behalf of and as agent
for” the inventor(s) who did not sign the application oath or declaration. See
37 C.F.R. § 1.47(b) and 35 U.S.C. § 118. A "proprietary" interest
has been interpreted by the courts to mean at least some element of ownership.
Additionally, the PTO has construed the word “person” to include juristic entities, such as
corporations. See Manual of Patent Examining Procedure § 409.03(b)
(2004). For each application submitted pursuant to § 118, proof of proprietary interest must
be submitted.
The person or company applying for a patent under § 118 must also submit the
statement of facts describing the attempts made to reach the unavailable or refusing inventor(s).
The same supporting evidentiary documentation to the statement of facts described in the above-
section should be included if possible. Additionally, a statement of the unavailable
inventor’s last known address must be submitted.
Preventive Measures
A company should be sure to maintain accurate contact information for departed
employees (typically the ones who might go missing or ignore requests from former employers).
In fact, IP owners should insist that any departed employee subject to an obligation to disclose and
assign inventions provide updates to contact information. Employ a standard letter to departed
employees when their assistance is needed with execution of patent-related documents and use some
form of traceable delivery method to establish efforts to reach such former employees. As with
previous scenarios, a company should have written assignments of all inventions (via employment
contract or specific assignment) from employee-inventors to establish proprietary interest for filing
under 35 U.S.C. § 118 (2004). Finally, to minimize the chance of missing or uncooperative
departed employees, consider a small bonus payment ($100?) for patents that issue after their
departure from employment with the company.
D. The Inventor Who Did Not Invent - And the One Who Did.
Patents and patent applications may list inventors who are not truly the
"inventors." As legally defined, an inventor is a person who made a substantial contribution
to at least one element of one claim of the patent. Franks Casing Crew and Rental Tools,
Inc. v. PMR Technologies, Ltd., 292 F.3d 1363 (Fed. Cir. 2002). Incorrect inventorship,
which can render a patent unenforceable, occurs in two ways: (a) “misjoinder” -
when the patent or patent application lists a person who is not truly an inventor; and (b)
“nonjoinder” - when the patent does not list one of the true inventors.
These errors need not be fatal. In fact, two sections of the patent code deal
with correction of inventorship. 35 U.S.C. § 116 addresses correction of inventorship on a
patent application, while 35 U.S.C. § 256 addresses correction of inventorship on an issued
patent. For a general discussion of the requirements of both sections, see Stark v.
Advanced Magnetic, Inc., 119 F.3d 1551 (Fed. Cir. 1997).
1. Misjoinder
As noted above, misjoinder occurs when a person is listed on a patent or patent
application as an inventor who did not make a substantial contribution to at least one
element of one claim of the patent. This error may be corrected (i.e., the non-inventor removed)
upon application to the PTO by all inventors and assignees under 35 U.S.C. §§ 116 and
256. Individuals or companies can correct misjoinder in patent applications by filing a request
under 37 C.F.R. § 1.48 or by filing a continuing application under 37 C.F.R. § 1.53.
Individuals or companies can correct misjoinder in issued patents by certificate of correction under 37
C.F.R. § 1.324 and § 256. Misjoinder may also be corrected in an issued patent
through reissue pursuant to 37 C.F.R. § 1.63.
As an odd twist, the Federal Circuit has invoked different requirements for
correction of misjoinder depending on whether it involves a patent application (§ 116) or an issued
patent (§ 256). Stark,119 F.3d at 1555. When correcting misjoinder in
a patent application, the misjoined inventor cannot have been listed on the patent through
deceptive intent on his or her part. Id. This requirement does not apply
when dealing with correction of misjoinder on an issued patent.
Id.
2. Nonjoinder
Nonjoinder occurs when a true inventor is not listed on the patent or patent
application. An individual or company can correct nonjoinder (i.e., add a true inventor) in a
patent application by filing a request under 37 C.F.R. § 1.48 or by filing a continuing application
under 37 C.F.R. § 1.53. Nonjoinder in an issued patent can be remedied by certificate of
correction under 37 C.F.R. § 1.324 and § 256 or by patent reissue under 37 C.F.R. §
1.63.
As for legal standards, nonjoinder may be corrected only if the nonjoined inventor
was excluded without deceptive intent on that inventor’s part. Stark,119
F.3d at 1551. In other words, the inventor who was not listed on the patent or patent application
could not have purposely left himself off the patent or patent application with intent to deceive the
Patent Office. Unlike with misjoinder, the no deceptive intent requirement applies to both patent
applications and issued patents. Id.
Preventive Measures
Correct inventorship is the most important of the inventor issues addressed in this
article. Patents that do not list the proper inventors are not enforceable until corrected, and if
inventors were put on or left off through some deceptive conduct, the patent may never be
enforceable. Thus, understanding the legal requirements of inventorship is critical.
Companies should keep accurate records of who worked on what projects and the
respective contributions of the team members. A patent attorney, either in-house or outside
counsel, should review these records when it is time to draft the patent application. In addition to
reviewing the invention records, the patent attorney should also interview possible inventors to
determine who is an inventor on any given patent application.
It is also important to consult the records again when the patent issues as the claims
may have changed drastically during prosecution. Given that the legal definition of an
“inventor” is a function of the claims of the patent, it is important to evaluate the claims
not just in the initial application but in the final issued patent as well.
Lastly, refrain, if at all possible (and consistent with job or client security) from
listing individuals on a patent as inventors simply because of their senior status on a project (or at the
company). If records and interviews do not corroborate an individual’s role in the
conception of the specific issued claims, do not put the patent at risk for the sake of vanity.
E. Proposed Legislation Regarding Inventor's Oath.
The controversial Patent Reform Act of 2007, which has passed the House and is
awaiting further Senate action, seeks to amend, among many other sections of Title 35, § 115,
which relates to an inventor’s oath or declaration and § 118, which provides for filing of
patents by persons other than the inventor. Currently, 35 U.S.C. § 115 does not provide
any express guidance on how a party other than the inventor of the claimed invention may execute the
oath all inventors named on patent applications are required to execute. This can create
problems for parties with a proprietary interest in a patent application where the inventor does not wish
to cooperate with the application’s prosecution. The proposed amendments to § 115
address this specific problem.
Subsection (d) of the amended § 115 states that a party who is not the
inventor may execute a “substitute statement” if the inventor is unavailable by reason of
death, incapacity, or inability to be found. Patent Reform Act, H.R. 1908 and S.B. 1145, 110th
Cong. § 4 (2007). In other words, the substitute statement could be filed in many of the
situations outlined above. The substitute statement would also be allowed if the inventor is under
an obligation to assign the invention, but has refused to make the oath required by subsection (a) of
§ 115. Id. A substitute statement must identify the individual to whom
the statement applies and set forth the circumstances explaining why the substitute statement is
permitted. Id. This amendment, if put into law, will likely make it easier for
companies to file patent applications on behalf of inventors who are unavailable or recalcitrant.
Proposed amendments to § 118 would expressly permit entities to whom an
inventor has assigned, or has an obligation to assign, patent rights to file a patent application without
first showing that the inventor is unavailable or will not cooperate (as in the present statutory
language). Others merely claiming a “proprietary interest” in an invention would
still be required to establish the propriety of filing the patent application in lieu of the inventor (why the
inventor cannot or will not file). See generally Patent Reform Act, H.R. 1908 and
S.B. 1145, 110th Cong. § 4 (2007).
The Patent Reform Act of 2007 is a work in progress, though the foregoing
amendments to simplify third party patent filings and declaration submissions have generated little
discord. Keep an eye on the Act for further developments.
III. CONCLUSION
Inventors are the human side of patented technology, and the frailties of human
existence, be they death, stubbornness, carelessness or subterfuge - can and often do play havoc with
the formalities of patent prosecution. With careful attention to invention disclosures, invention
assignments and the law of inventorship (and the applicable statutes and regulations), most of these
inventor problems can be avoided. Congress may step in shortly as well with a vehicle to save
time and trouble.
Ernest Grumbles III is a partner in the Minneapolis office of Merchant &
Gould P.C. and focuses his practice on patent and trademark litigation and
related portfolio counseling. J.R. Maddox is a partner at Adams, Monahan, &
Sankovitz as well as the Director of Intellectual Property Services for Lexadigm Solutions,
LLC. They may be reached at egrumbles@merchantgould.com and jmaddox@lexadigm.com.
