Is Sewall v. Walters Still Good Law?¹

By Charles L. Gholz²and W. Todd Baker ³

Introduction

Interferences have traditionally come in three “flavors”: so-called priority disputes (which, despite the name, are actually usually decided on the basis of non-priority issues, such as patentability and claim correspondence), derivation disputes, and inventorship disputes.⁴ With the passage of the America Invents Act (hereinafter referred to as “the AIA”),⁵ priority disputes are on their way out, and derivation interferences have largely been replaced by derivation proceedings.⁶ But how about inventorship disputes a la Sewall v. Walters, 21 F.3d 411, 30 USPQ2d 1356 (Fed. Cir. 1994) (opinion delivered by Circuit Judge Rich for a panel that also consisted of Chief Circuit Judge Archer and Senior Circuit Judge Lay of the Eighth Circuit)?⁷

What Sewall v. Walters Held

Sewall v. <...