© 2003, Dawsey Co., LPA
June 2003

While we have often stressed the importance of correctly naming inventors, it is possible to correct the inventorship designations, even on an already issued patent.

37 C.F.R. §1.324 enables the Commissioner, upon proof of facts and on application of all the parties and assignees, to issue a certificate correcting such an error. The error of omitting inventors or incorrectly naming persons who are not inventors does not invalidate a patent in which such error occurred if it can be corrected as provided by §1.37. Furthermore, a court before which such an issue is called in question may order correction of the patent on notice and hearing of all parties concerned and the Commissioner will then issue a certificate of correction by court order.

What are the important facts? First and foremost, the error or omission must have been without deceptive intent. Of course, this rules out deliberate decisions on inventorship. These deliberate decisions may be ascribed either to the persons presently named as the inventor or to the party seeking correction. Neither the patent code nor the rules of the Patent and Trademark Office require that an omitted inventor of an issued patent must diligently bring a lawsuit to correct inventorship, or be barred from doing so in the future. Certain circumstances, for example an inventor who knows but does nothing to make a correction, or the need to correct inventorship to proceed with an interference hearing, may bar later claims to joint inventorship. Diligence in filing suit to correct inventorship is measured from the date that the party had actual notice of the patent’s issuance, that is, not only had reason to know, but actually knew of the issuance.

In addition, under 35 U.S.C. § 256, “error” also does not encompass gross negligence in avoidance of correction on the part of responsible knowledgeable parties having full notice of the facts and their significance.

Certificates of correction to name correct inventors can be issued to correct misjoinder (deletion of a non-true inventor), nonjoinder (failure to name a true inventor) and for substitution (removing one sole inventor in favor of another sole inventor).