Hor v. Chu–Laches and Correcting Inventorship

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

This week, the Federal Circuit issued an opinion clarifying the time in which an individual who believes he or she is a co-inventor of an invention (but is not listed as an inventor) must act in order to correct the inventorship of a patent or patent application. Under 35 U.S.C. § 256, the Patent Office or the courts may correct any errors in the naming of the inventors in an issued patent. In Hor v. Chu, No. 2011-1540, the Federal Circuit determined that an individual who believes himself or herself to be an omitted inventor has six years from the date the patent issues to attempt to correct the inventorship, or the presumption of laches will apply. This is true even if the individual knows of the inventorship problem before the patent issues.

The patents at issue in this case involved high temperature superconductors and had a rather long history. The applications were filed in 1987 and 1989 by a professor from the University of Houston (Chu), but the patents did not issue until 2006 and 2010, respectively, due to a lengthy interference proceeding. A graduate student (Hor) and another scientist (Meng) who worked in Chu’s lab contended that they were co-inventors of the two patents. The patents listed Chu as the sole inventor, though. The trial court found that both Hor and Meng were aware (or should have been aware) that Chu applied for the patents without listing their names no later than the early 1990s. Hor did not file suit until 2008, and Meng did not move to intervene until 2010, however. Chu moved for summary judgment, arguing that Hor and Meng’s claims were barred by laches, which is a doctrine that can bar a claim if a plaintiff delays filing suit for more than six years after the claim accrues. Based on the trial court’s determination that Hor and Meng knew of the inventorship issue in the 1990s, the trial court found that their suit was barred by the doctrine of laches.

The Federal Circuit reversed, finding that the statute (35 U.S.C.§ 256) is quite clear that claim to correct inventorship requires that the patent issue first. Therefore, neither Hor nor Meng could have brought the § 256 claim until after the patents issued. Because laches cannot bar a claim before it accrues, the Federal Circuit held that Hor and Meng’s knowledge in the early 1990s could not bar their § 256 claims. Instead, the laches clock can only start on the day the patents issued. Because Hor and Meng filed suit within six years of these dates, the Federal Circuit held that the trial court erred in granting summary judgment on the basis of laches:

[T]he laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO.

While recognizing that this holding could create incentives for omitted inventors to wait to challenge their omission, the Federal Circuit felt it was bound by the statutory language and the case law regarding laches. In addition, the Federal Circuit noted that a different holding could create unnecessary work, given that claims are often narrowed or dropped during prosecution and who should be an inventor may not be clear until the patent actually issues.

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