Stevens v. Broad Reach, 79 USPQ2d 1501 (W.D.Mo. 2006).
Feeling he had been slighted by not being listed as the inventor on a patent application directed to a liquid polymer blender, Kirt Stevens sued — seeking a judgment that he is the inventor of the claimed invention and an injunction forcing an amendment to the pending application.
On motion, however, the court dismissed the claims for lack of subject matter jurisdiction. In particular, the court found that amendment of inventorship in a patent application is governed by 35 U.S.C. § 116. That statute provides that amendment be made before the PTO and, according to the court "does not provide a private right of action in federal court to resolve inventorship disputes in patent applications."
Case dismissed.
Notes: Of course, Stevens cannot take action under Section 116 without the cooperation of the other side. Suggestions for Stevens? The application, filed in October 2004, has apparently neither been published nor issued as a patent.
How is fraud in a dependent claim handled? This is not an issue about prior art but rather knowingly making a claim that is not scientifically valid and where the inventor had data that does not support the claim included in the application.
Can a third party file with with the PTO to have a reexamination? Can an inventor working on a similar work file for a reexamination (inter parte)?
Can an unidentified co-inventor make a request for reexamination or stay the issuance of the patent based on intimate knowledge of the invention after a Notice of Allowance?
If the Notice of Allowance has “just” been issued does that have any bearing on how the PTO handles this type of issue?
Does the patent reform act 2007 weaken inventor rights and How and why is this bad for the planet.If not for inventors we would be sleeping on the ground with insects buzzing around our heads. We would survive or not on roots and berries.Under our present system inventor rights are already badly suppresed.Take for example the patents offices policy of destroying the inventors intellectual property rights concerning materials contained in patent applications.When a inventor is unable to reduce to practice and begin manufacturing within 1 year of invention filing intellectual material rights are stolen.What should change in reforming the 2007patent reform act to correct this.In this system R+D persons and backers bid at auction on development rights 6 months to 2 yr. time periods are awarded initially to the highest bidders depending on the complexity of the project.Original teams not progressing well are replaced with second highest bidders. Master Inventors attempt to solve sub invention problems to complete project for full payment.Inventor retains all intellectual materials associated with project for 20 years with rights of survivorship to family.
First inventor to file gets the patent.Whats wrong with this statement in our proposed reformed 2007 system?this allows unscruptulious individules to intimidate inventors in an attempt to steal their patents and record them in there name.The race to the patent office problem is not fully solved In the first place the The patent office should Investigate on a regular basis the concept of Master inventor status for the individual who actually produces all the worlds inventative original contcepts. This is possible by investigating invention clusters surrounding individules able to produce invention immediatley clue there is only one. also after the new system is in place a study of ability to produce high quality original patents should be studyed to determine if the term worlds only inventor of significence can be applied.this individual would be considered the preferential inventor in cases of inventor disputes.
In order to form a more perfect patent reform act 2007 we should.Create in addittion to first to invent system a twice yearly deadline filing statute. All secret research projects and any matters concerning stolen intellectual materials allegations would be required to be turned in before the deadline to minimize the potential of the nessity of deprivation hearings.All procedures concerning this procedure should be held as securly guarded public full acess hall public meeting with secured interior visable locked lockered numbered adaquate quantity file spaces for patent progress files.After the deadline passes inventors may file patents and the only disputes that this procedure addresses must be imediatley disputed by a comparison of materials in the files compared to those being filed after deadline.After the comparisons are made locker materials may be retrieved or destroyed and reentered and updated if nessary at the next public hearing.Also the P.T.O. could auction the patent development rights to small entrapamuers and large on an auction basis to the highest bidder of % of profits after all expenses or cash restricted access and usage basis. inventions would be delayed 6 months from initial public patenting disclosure to allow companies and individuals time to study the potential fesibility and monitary potential of the invention before auctioning.
“The present system results in life times of inventative repression.”
This parody is teh awesomest yet.
Talk about gastapo tactics the concept of inventor rights sign offs associated with employment is a total barberism of our civel rights. What president judicially ever made it legal or is there any.It surprises me they don,t ask for your first born too.Theres one that should be bared from existence in 2007 reform act.unconstitutional you bet.It could be replaced be A required 33%of profit after all expences business agreement concerning invention produced on the employers property.The present system results in life times of inventative repression.
Patent reform act of 2007 needs much reforming. The acts main feature claims to address much needed rule changes to prevent intellectual material thefts.however it starts out simply putting problems in different packages. Example the bill changes a corrupt first to invent system that allows anyone to backdate an invention date to steal an invention. To a first to file system that allows patent thefting by allowing inventions to be discussed up to one year previous to filing a patent.Then the theftor just starts a disspute and claims to be the inventor and files first.Does this make any scence.
37 CFR 1.99 allows third party submission of an IDS for the Office to evaluate prior art, could you just expand 1.99 to allow submission of stuff like this? Change of inventorship, etc. and them let the Examiner or BPAI deal with it.
I think the issue of patent quality and backlogs could be greatly assisted by establishing an initial grading system for patent application that establishes a good,fair or poor initial quality rating and processing order in order to both speed good patents to market and warn potential investors and patenters of potential non marketability of poor quality patents.
If Stevens merely wanted to put a cloud over the patent, the dismissed case probably did the trick. Unless Broad Reach and their attorneys lie about it, any half-way decent due diligence should uncover the fact that there’s a claimant out there.
Without having all the facts, if I assume that Stevens was an employee of Broad Reach, then it would be highly likely that we would have had an employment agreement which, among other things, would have provided for the assignment of all his inventorship rights to inventions developed during the course of employment, to his employer – Broad Reach. In such case, it would appear that whether or not Stevens succeeds in getting his name on the patent application, he would still never be entitled to either participate in prosecution decisions, or share in the pecuniary gain that may be derived from the issued patent.
If the above assumption is correct, then Stevens’ remaining motivations are to see his name on a patent, share any prestige that may be associated with this invention (if any), and hopefully use that to help him get his next job. [This must be a big invention to merit him spending money on a lawsuit.]
Again, if the starting assumption is correct, it should really not make much difference to Broad Reach whether or not Stevens is named as an inventor, unless of course, they absolutely affirmatively know that he is NOT an inventor, and would be committing a fraud on the patent office by naming him.
This almost seems like a tempest in a tea pot. Am I missing something?
Just so all of you folks know, I had a district court case years ago styled Stamicarbon v. McNally Pittsburgh where the following occurred: We were obligated to sue for infringement via a license provision, even though the damages were not likely to be worth the expense of the suit and we were dubious in any event of the patent validity being upheld. In the course of discovery we learned that the sole named inventor should have been joined with a second major contributor to the claims. The facts were that the sole inventor and the omitted inventor had never met, they had no telephonic or correspondence or memo exchanges nor any other communication between them, yet indisputably the omitted inventor had made a significant contribution without which there would not have been any invention at all. While that contribution was recognized by the originating foreign patent preparer, he never bothered to add the second man to the inventorship. Seeing this situation as an easy way out of an undesired lawsuit, I filed a ? 256 motion to join the omitted inventor, fully expecting to lose on those facts. Surprisingly, the judge ended up quite sympathetic and amended the patent to join the two individuals, and ordered trial to proceed. As it finally turned out, we won the trial, with a damages award that just slightly exceeded legal fees and expenses.
I am surprised that the implications on the rights to control prosecution and foreign rights are not discussed here. Filing in state court, waiting to sue in federal court until the patent issues, or even waiting to file and copy claims until after publication, limits Stevens’ ability to control the outcome of the patent prosecution process and perhaps the ability to secure a patent at all.
Broad Reach may be just as happy to let this patent application go abandoned and dedicate it to the public as to let it survive with the risk that Stevens owns it jointly or solely. Given the current fact pattern (i.e., one round of litigation has already been fought) the likelihood that Broad Reach will settle the matter that is acceptable to Stevens in the interest of good business is probably low.
I did a quick search for the named inventor and the title of the invention as listed on the complaint and found nothing. I would also guess from the complaint that Stevens has a copy of the application as filed (he knew the express mail number). If so, copying the application would be trivial. It would be my guess that the application by Broad Reach was not foreign filed or was withdrawn. Assuming that there was no other publication or divulgation of the invention, there may still be a possibility to protect foreign rights.
I would advise that a US (perhaps claiming priority to the pending Plache application under section 120 to protect the US interests) and PCT application (the Paris convention may not be available here as it is more than one year after the first filing of the subject matter of the invention) be filed as soon as possible while exploring these additional litigation and settlement avenues.
One other fact to consider: if the application was filed 10/04, it should have published by now, shouldn’t it? Either a non-publication request was filed, or the underlying application has gone abandoned. It looks like state court on a contract or fraud theory is the way to go.
With so much $$$ waiting at the end for an inventor and his attorneys, the issue of inventorship won’t go away. If the inventor did not assign their rights to the company and the inventor has attorneys, then the inventor will eventually figure out that he should get some $$ from the company.
Thalia is absolutely right. Instead of playing litigation games, the company should evaluate whether the person is an inventor and come to a settlement. The problem comes from the company not having the inventor assign over his rights while employed. The problem does not come from the inventor-with-attorney trying to assert those rights. Both of them publically attacking the enforcibility of the patent or patent application leaves everyone at a loss (except the company’s competitors).
Czarnik v. Illumina, Inc. (D.Del.,2006 Jul 13, 2006), cites Stevens v. Broad Reach (W.D.Mo. May 31, 2006) for the proposition that 35 U.S.C. § 116.”only grants the Director of the Patent and Trademark Office the authority to take certain actions and plainly does not create a cause of action in the district courts to modify inventorship on pending patent applications.” In Czarnik, Mr. Czarnik was Illumina’s chief scientific officer who invented things related to IBL/DBL and nanocrystals and who apparently did not sign an assignment of all intellectual property rights to Illumina while working at Illumina.
The case summarizes how Mr. Czarnik became depressed, was fired, and won a San Diego County judgment against Illumina since Illumina had discriminated against him based on his disability. link to peo7.com Illumina’s then somehow convinced Mr. Czarnik to assign all rights in one C-I-P assign to Illumina. Mr. Czarnik then found out that Illumina had prosecuted many other patents that contained the IBL/DBL and nanocrystal inventions, but which failed to identify Mr. Czarnik as an inventor. Mr. Czarnik tried to get the USPTO to correct inventorship on applications and on patents, but the USPTO did not respond. Mr. Czarnik then sued in federal court, which told Mr. Czarnik to take up the pending patent applications with the USPTO.
However, the Court concluded that Mr. Czarnik has sufficiently alleged the elements of a fraud claim to survive a motion to dismiss. In his Complaint, Mr. Czarnik alleges that Illumina’s intentionally concealed patents and patent applications that contained his inventions, while arbitrarily disclosing two USPTO filings, that he justifiably relied on the concealment by failing to take action to ensure his name was on other patents and applications containing his inventions, and that he was not given the recognition he deserves and has been unable to find comparable employment as a result of his name being excluded from the patents and applications. link to ded.uscourts.gov
If Mr. Czarnik did not assign his rights to Illumina, doesn’t Mr. Czarnik own those rights?
The best approach for Stevens depends on whether the inventor is seeking money or merely desiring (to vindicate his moral right) to be named as an inventor. If he only desires to be named as an inventor, he can wait and file a suit under section 256. If his inventorship lies in a “throw away” dependent claim(s) that might not be a good strategy, because those claims may be cancelled in which case an interference may be better.
Authorship disputes over academic research papers, sometimes between graduate students and faculty advisors, do get litigated.
An interference can be very expensive.
But if he waits for the patent to issue, and the true inventorship was withheld by inequitable conduct, then the patent is unenforceable, even by him should he obtain ownership of it or if he is added as an inventor under section 256.
I think the best solution is to file an application of his own (if it’s not too late) and provoke an interference.
A true inventor should not “sit” on his invention. He should file his own application and if he has uncooperative co-inventors, he should name them and file a petition under 37 CFR 1.47. If he has a copy of the application that does not name him as an inventor, he can copy the claims that belong to him and request that an interference be declared. If he does not have a copy, he should provide as much info as he has relative to the co-pending application and indicate on the record his intention to copy any claims from the other application which are rightfully his, as soon as he is able to obtain a copy of that application. Additionally, he should serve a copy of his own application on any co-inventors with a request that they sign the Declaration naming them as co-inventors and ask them to make available to him a copy of any application that the other inventors may have filed on similar subject matter so as to enable him to ascertain whether he should have been named a co-inventor in those applications.
I agree with filing a patent application directed to his invention. Although provoking an interference could be a costly endeavor, it does bring the issue forward. It would seem hard to believe that he has not already contacted the other inventor(s) and/or the corporate entity.
35 USC 256 only applied to “issued patents” and so does not provide a right of action for this purported inventor.
He seems to be out of luck until the patent issues. After that, he can try for a 256, or a reissue patent to correct inventorship.
But really, he should use a direct approach. He should send a formal letter to the inventors & corporation stating that he should be named as an inventor, and that they should investigate this soonest so as not to taint the patent. If one of my clients received such a letter, I guarantee we would spend the time to investigate, because having such a letter on record removes the “without deceptive intent” claim, and could potentially invalidate the patent.
1. Wait for the patent to issue and sue under 256. Section 256 does provide a private right of action. The result here under 116 is consistent with the precedent as I remember it.
2. File a state court action on a contract theory requesting a transfer of ownership of the application, or beneficial ownership of the application. From there, compel the named inventor to change inventorship.
3. Depending on how much information he knows about the application, he could file his own copied application and claims, provoking an interference. Perhaps just wait for publication and copy the application, changing the name of the inventor?
4. I hope the applicant has informed the examiner of the state court action and the inventorship allegations, because the information is material and could lead to the unenforceability of the patent. (PerSeptive, Frank Casing Crew).
Can’t the inventor just write a patent application on “his invention” and that would secure his rights to his invention? Once the pending application in question publishes, he can then copy the claims and add them to his application and request an interference.
David,
501 letters only properly pertain to “prior art consisting of patents or printed publications,” and in this case the alleged co-inventor’s activities are most likely not prior art and most likely not documented in a patent or a printed publication. Obviously, someone could slip a remark pertaining to the inventorship issue into an otherwise legitimate submission, but that does not seem to be a particularly effective approach.
That being said, the gist of the idea has merit. Since the application has yet to be published, the alleged inventor could file a protest under Rule 291 including “other information” relating to the alleged defect under § 116 (“When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath…”). The office will likely consider the submission to relate to inquitable conduct and merely enter the submission into the file (subsection (e)), but at least the office is required to enter the protest into the file. The 501 letter could be rejected as a non-compliant third party paper.
It seems to me that the only reason to make a big deal of this is to take home some of the lolly from this patent. Therefore, he doesn’t want to denigrate the invention itself.
Instead, he wants to put a cloud over it. If the inventorship is not corrected, then the patent is potentially invalid and valueless.
He could file a 501 letter in the file setting out his inventorship claim. When a person or company is approached to take a license, or accused of infringement, they’ll obtain a file wrapper, and his claim will be in it. At this point, they can fight to invalidate the patent for naming the wrong inventors.
The patent owner, thus, now has an incentive to cooperate with him at least to the point where they can *prove* that he is not an inventor, or if they can’t do that, they can bite the bullet and include him as an inventor.
This is a cheap route to push them to cooperate.
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