The Heavy Burden: Overcoming the Presumption Against Improper Inventorship

An important change made in the America Invents Act of 2011 was to allow patent owners to file for patent protection as patent applicants rather than relying upon sometimes uncooperative inventors to do so.[1]  However, the AIA did not make any changes to the ever-present rule that ownership stems from invention and thus initially vests in the inventors.[2]  Because ownership is tied to invention, inventorship disputes remain a part of patent law even under this new regime.

Meng v. Chu (Fed. Cir. 2016) focuses on two superconductivity patents purportedly owned by the University of Houston based upon assignment from the listed inventor Prof. Ching-Wu Chu.[3]  I discussed this case previously in my post titled: Can you Wait 20-Years to Challenge Inventorship?: In this case, Yes, Patently-O (November 15, 2012).  In its 2012 decision, the Federal Circuit rejected the lower court’s conclusion that the challenger (Meng & Hor) claims were barred by laches or equitable estoppel.[4]  A difficulty with the case is that the patents were filed in the 1980’s but did not issue until 2006 and 2010 respectively.   Meng & Hor worked with Chu during the research, but were not listed as inventors.

In the remand, the district court held an eight day bench trial on the inventorship claims and ultimately rejected both Meng & Hor’s claims – finding (1) that Meng had failed to show that her contribution exceeded the ordinary skill in the art; and (2) that Hor had not provided sufficient corroborating evidence so as to overcome the clear-and-convincing standard required for correcting inventorship. On appeal here, the Federal Circuit has affirmed.

In order to prevail on a § 256 claim, an alleged co-inventor must show that he contributed to the conception of the claimed invention and that his contribution was “not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Acromed Corp. v. Sofamor Danek Grp., 253 F.3d 1371 (Fed. Cir. 2001). An alleged co-inventor’s testimony regarding his contribution must be corroborated, which courts assess under a “rule of reason” analysis. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998).

Here, the Federal Circuit reviewed the evidence presented and agreed that it was ambiguous at best. As such it was insufficient to overcome the ‘heavy burden.’

= = = = =

[1] As most patent attorneys know, the old rules provided a mechanism for an owner to file for patent protection on behalf of an uncooperative or unavailable inventor.  However, that model is different than the rights-holder filing on its own behalf.

[2] See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237 (Fed. Cir. 1993).

[3] U.S. Patent Nos. 7,709,418 (“’418 patent”) and 7,056,866 (“’866 patent”).

[4] See Hor v. Chu, No. 4:08-CV-3584, 2015 WL 269123 (S.D. Tex. Jan. 21, 2015) and Hor v. Chu, 765 F. Supp. 2d 903, 906 (S.D. Tex. 2011), aff’d in part, rev’d in part and remanded, Hor v. Chu, 699 F.3d 1331 (Fed. Cir. 2012).

25 thoughts on “The Heavy Burden: Overcoming the Presumption Against Improper Inventorship

  1. 4

    Logically, the fact that now almost all important patent applications have 18 month publications should make for easier laches defenses to inventorship claims not made until long after application filing dates, no matter how long the patent issuance was delayed? [Unless there were drastic changes to the claims after the application publiccation?]

    1. 4.1

      I don’t think that that necessarily follows, since given that claim amendments any time during prosecution can change inventorship, there is no real tie to publication.

      It still remains to be seen what the actual claims are at grant.

  2. 3

    Not to be too cynical, but you just got to read the government’s brief in Cooper v. Lee where they support the notion that patents withdraw from the public (rights held by the government) and grant monopoly privileges to their owners and thus are public rights. (Quoting Thomas in Teva.) Brief at 12.

    This is the kind of thinking that undergirds the effort to support IPRs constitutionally. It totally disregards the plain fact that inventions are not the property of the government. The inventor discloses his invention in exchange for a limited period of exclusive rights after which others are free to use the invention. The government does not give an patentee title to government property as land patent does. The government does not give the patentee a monopoly on preexisting trade as did the trade monopoly patents outlawed by the Statute of Monopolies. They only protect the use of the disclosed invention by others in exchange for its disclosure.

    We all have to realize just how corrupt and corrupting the backers of the AIA truly are. They are willing to throw the baby out with the bathwater to protect their precious IPRs. It is time to call a halt.

    1. 3.1

      Patents are not a natural right. But for patent law, you have no rights to an invention. In that sense, the government is granting you something that you cannot get yourself, and but for what they are granting you, the public could otherwise practice (for example, by independent invention or reverse engineering).

      1. 3.1.1

        Ordinary, Federalist 43″

        “A power “to promote the progress of science and useful arts, by securing, for a limited time, to authors and inventors, the exclusive right to their respective writings and discoveries.”

        The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals. The States cannot separately make effectual provisions for either of the cases, and most of them have anticipated the decision of this point, by laws passed at the instance of Congress.”

        It is clear that but for the intervention of the Statute of Monopolies, the Common Law would have protected inventions. Madison thought they were just as much common law rights as were copyright rights and sprang from the same source: the right of men to the fruits of their labors.

        Even Roman law recognized as illegal the suborning of a worker (slave) to reveal the trade secrets of his boss (owner). Since, the concept of trade secret protection has continued to progress in the common law. The only difference with patents is that the inventor must disclose in exchange for rights that protect against independent invention, and further protect the structure of a machine, etc. once the product is sold and which then is easily reverse-engineered.

        The courts have long recognized the absolute necessity of providing inventors exclusive rights in order to get inventors to disclose their inventions. Property for property. Not property for money.

        The whole idea that patents are public rights is nonsense. But for the intervention of the Federal Government by putting patents in the constitution, the states did and would have continued to protect inventions with patents by providing statutory exclusive rights in exchange for disclosure.


          Ned, I agree with you.

          But, I wonder what framework the Supreme Court will take to answer the question?

          Each case has been laid out: (1) government grant that vests upon conception and reduction, subject (under AIA) to first file; or (2) inchoate right (invention before filed application) disclosed in exchange for the government grant (the vested right).*

          * Both are, obviously, subject to ss 101, 102, 103, and 112 for full vesting.


            Keep in mind Alex that the inchoate right matures at grant into a full property right and as such enjoys at that moment other protections afforded by the Constitution for property.

            Thus, even though the government may perform a taking of property (think eminent domain), the government – even the legislature with proper authority to write patent law – cannot write that law in a vacuum and have any new law written that violates other Constitutional protections.

            Of course, as I have previously mentioned, the right questions must be presented to the court, or they will not answer it.

      2. 3.1.2


        I suggest that you reconsider your views through the proper reflection of law and property.

        You appear to be sharing a room at the Holiday Inn with your attempt to take a “street view” of the realm of law. There are certain things that must be viewed in proper context, and with proper recognition of the terrain upon which you stand.

      3. 3.1.3

        A person’s ideas, thoughts, affections and inventions ARE a natural right. Go brush up on Locke. See definition of inalienable. The copyrights and patent clause is the explicit recognition of that understanding of the human condition as having divine origin and ergo certain natural inalienable rights exist. From there you can build a frame work of positive and negative rights in which to understand the American experiment. To say a patent is not a natural right – is a tautology. A patent is a codification of a natural right in exchange for limited use.


          iwasthere, I don’t know about “divine.” However, I know that one does have a right to the fruits of one’s labor, one’s property, just as one has a right to life and liberty. Governments are established by men to protect these rights.

          Patents do not withdraw from the public things that are the public’s, but grant inventors exclusive rights for a limited time in exchange for giving their inventions to the public.


          iwasthere A person’s ideas, thoughts, affections and inventions ARE a natural right.

          Wow. You guys really take the cake. Worst. Attorneys. Ever.

          Those aren’t “rights” at all. Those are things that you can theoretically possess the right to control but once you express them they are out of your control absent some artificial paradigm (e.g., government action) that you create to give you the power of control.

          You express an idea to me and that idea can immediately become my own idea. You can’t tell me what to think, and you can’t tell me when to think about it and you can’t tell me how it makes me feel. The things you make and use yourself may be “naturally” “your own things” but that’s also true of the things I make and use myself.

          A patent is a codification of a natural right

          Not at all.

          The copyrights and patent clause is the explicit recognition of that understanding of the human condition as having divine origin and ergo certain natural inalienable rights exist.

          LOL How odd, then, that the Framers discussed patents and copyright as an option for Congress, rather than mandating them.

          IPRs aren’t going anywhere.



          Locke, while indeed influential, did not write the U.S. law.

          So while it is egregious and unfounded to merely state that “IPRs aren’t going anywhere” (since they are simply NOT immune from being thrown out if the law establishing them is found to violate other constitutional protections of property) one must draw a distinction between an inchoate right and a full property right.

          Further, this in particular should be noted: the property right that is a patent right was ALWAYS intended to be a fully alienable right.

          Your view of “ To say a patent is not a natural right – is a tautology” simply is not correct. A patent is an inchoate natural right that has been vetted and made into a full property right at the moment of grant.

    2. 3.2

      Ned: the government’s brief in Cooper v. Lee where they support the notion that patents withdraw from the public (rights held by the government) and grant monopoly privileges to their owners and thus are public rights.

      In addition to what Ordinary Squirel noted at 3.1, it’s certainly true that patents that are mistakenly granted (and we know that a huge number of them were (and are) being mistakenly granted) withdraw rights from the public.

      1. 3.2.1

        There you go again, forgetting what – by law – is one of the sticks in the bundle of property rights that is a patent: the presumption of validity.

        Malcolm, you do realize that one reason you come across as the Trump of anti-patentists is because you should know better and yet continue to advocate as if the law was something else, eh?

      2. 3.2.2

        MM, no doubt. But who is to decide?

        It IS strange that today we face the same constitutional crisis that faced England in 1753. Prior to 1753, the courts and the Privy Council each asserted jurisdiction over validity of patents of invention. But in a case where each were judging the same patent and the question arose of who was telling the truth about the state of the art, the Privy Council ceded the trial of disputed facts to the courts and to juries.

        See, Lemley, Mark A. “Why Do Juries Decide if Patents are Valid?.” Virginia Law Review (2013): 1673-1736 at note 37.

        Bracha, Oren. Owning ideas: A history of Anglo-American intellectual property. Diss. Harvard Law School Cambridge, Massachusetts, 2005 at note 127.

        “Is it possible to trace a clear moment in time when this last bastion of
        the traditional scheme of patent grants finally gave way? Most historical
        accounts follow E. Wyndham Hulme in pointing to one dramatic moment in 1753 in which “a reconsideration, from a constitutional standpoint, of the Council’s jurisdiction” occurred, leading the Privy Council to “divest itself of its functions.”




          Malcolm is already on record as not caring about your pre-1776 items of conversation.

          He just does not care about the point that you are attempting to make. That particular “means” just does not fit his desired “ends.”


              You were not paying attention – as is your typical thing in dealing with those who just happen to agree with your other viewpoints on things like 101.

              (a symptom of that dreaded affliction of “6-is-a-genius-because-he-agrees-with-me”)


                …maybe Malcolm will deign to weigh in and tell you directly – but I would not hold my breath.

  3. 2

    AIA 35 USC 115 (a) Naming the Inventor; Inventor’s Oath or Declaration- An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application.
    (b) Required Statements- An oath or declaration under subsection (a) shall contain statements that–
    (1) the application was made or was authorized to be made by the affiant or declarant; and
    (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application. ..”

    1. 2.1

      And does anyone want to comment as to why the phrase “without deceptive intent” was removed wholesale (including pertinent to this section), and just what that such a removal may “allow”…?

      If I were cynical, I might suggest that a Corp has no “liability” for playing loose with the “requirements” of proper inventorship.

      They have to be “caught,” and then the one “catching them” has to fight (typically alone) against the Big Machine.

      Another flavor of “efficient breach” brought to you by Big Corp and Citizen’s United.

    2. 2.2

      Note that AIA 35 USC 115 (a) does not use the word “applicant.” It requires an oath or declaration [under penalty of perjury] from “each individual who is the inventor or a joint inventor.” Nor is their any exemption here for deceptive intent, false oaths or suborning of false oaths.

  4. 1

    AIA allows companies to file the application on behalf of an uncooperative inventor, but provides no solution for uncooperative inventors with Statements to DOE or NASA (MPEP 150) – those are required at Examiner request and provide few extensions and AIA rule does not cover.

    1. 1.1

      MPEP 151:
      The word “applicant” in both of these statutes is construed by the Office to mean the inventor or joint inventors in person, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. Accordingly, in the ordinary situation, the statements must be signed by the inventor or the joint inventors, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter if available. This construction is consistent with the fact that no other person could normally be more knowledgeable of the “full facts concerning the circumstances under which such invention was made,” (42 U.S.C. 2457) or, “full facts surrounding the making or conception of the invention or discovery” (42 U.S.C. 2182).

      USPTO doesn’t administer 42 USC 2457* (NASA statute) or 42 USC 2182 (Department of Energy) are not administered by USPTO so that interpretation is probably not subject to chevron deference. So, yeah, that’s interesting.

      * I couldn’t figure out where this statute went at first (repealed in 2010). It was moved to 51 U.S.C.A. § 20135. Title 51 is NATIONAL AND COMMERCIAL SPACE PROGRAMS!

      Man, it only took a hundred years for the National Advisory Committee for Aeronautics (aka NASA) to finally get its own title in the US code. And, only because there is money in it now.

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