© 2002, Dawsey Co., LPA
November 2002

The United States Court of Appeals for the Federal Circuit (CAFC) recently held that a patent was unenforceable because it incorrectly identified the inventors. In Frank’s Casing Crew & Rental Tools, Inc. v. PMR Techs. Ltd. the inequitable conduct of two named inventors in failing to properly name a co-inventor resulted in the unenforceability of the patent. Therefore, even the innocent unnamed co-inventor lost all rights in the invention.

In this case, two brothers, the Vincents, owned a company that hired Peter Weiner as a consultant. The Vincents, John Shaunfield, and Weiner invented a method and apparatus for monitoring torque while connecting threaded tubular goods, which is particularly useful in the oil and gas drilling industry. The Vincents then applied for, and subsequently obtained, a patent on the invention, purposely not naming Weiner as a co-inventor in an effort to hide his involvement in the invention.

Upon issuance, PMR Services, Inc. (PMR) obtained a license to the patent and attempted to sell licenses to a number of oil and gas companies. PMR also sent over 300 “cease and desist” letters to Louisiana residents. An action was filed by a number of the letter recipients in the Western District of Louisiana seeking a declaratory judgment that the patent was invalid, unenforceable, and not infringed. The District Court held that the patent was unenforceable because of the Vincent’s inequitable conduct. PMR then appealed to the CAFC. The CAFC affirmed the District Court’s holding that the patent was unenforceable due to the inequitable conduct of deliberately concealing a co-inventor.

Here the deceitful conduct of the Vincents cost the innocent co-inventors the right to enforce the patent and cost the numerous other parties with ties to the invention considerable sums of money in litigation. Numerous additional actions undoubtedly arose from the damages

Patent applicants should learn a valuable lession from this holding. No matter how strained relationships between co-inventors may be, hard feelings cannot get in the way of properly identifying co-inventors in a patent application. The key issue is one of intent: While true oversights in naming inventors can be corrected under various circumstances, if a deliberate decision is made to omit naming a true inventor in a patent application, the patent that later issues is fatally invalid and cannot be corrected by any means. The penalties for misrepresentation to the Patent and Trademark Office are extremely harsh!