13 Aug Re-Thinking Inventorship:  Why the U.S. Patent System Should Ease Correction Instead of Enabling Invalidation… by Erik J. Osterrieder

The United States patent system rests on legal precision and ethical fairness.  One area where these ideals clash is the treatment of omitted inventors.  Currently, failing to name a proper inventor can render a patent invalid – even if the omission was unintentional.  This rigid approach jeopardizes valuable innovations and undermines the collaborative nature of research.  Rather than permitting invalidation, the system should make it easier to correct inventorship errors, even in cases when an inventor is intentionally omitted because inventorship is a matter of legal entitlement, not personal discretion. 

America Invents Act (AIA)

Aligning with the above perspective is the America Invents Act (AIA) of 2011, a policy which removed the requirement that inventorship errors be made without deceptive intent.  AIA’s policy shift towards prioritizing accuracy over motive harmonizes with the notion that inventorship is a matter of legal entitlement, and at least in the author’s viewpoint, simply an issue for ministerial correction regardless of motive.

Modern innovation is rarely the product of a lone genius.  Rather, it often emerges from interdisciplinary teams in labs, universities, and corporate environments in various locations.  Given the complexity of invention attribution – especially when contributions are incremental, technical, or indirect – it is unsurprising that oversights in inventorship occur.  Rendering a patent unenforceable is counterproductive to at least the social benefit from the patent system: fostering disclosure to move society forward technologically.

Moreover, the U.S. patent system already acknowledges that inventorship is not an administrative footnote – it is a legal requirement.  Only true inventors have standing to be named, and listing someone who did not contribute to the conception of the invention constitutes inequitable conduct.  But the inverse is also true:  omitting a legitimate inventor can jeopardize the patent’s validity.  This creates a troubling paradox where inventorship must be perfect from the outset, despite the system’s recognition that it is a technical determination best assessed in hindsight.

35 U.S.C. § 256 – Correction of Named Inventor

Correction under 35 U.S.C. § 256 is one solution, but procedural hurdles and litigation risks often discourage voluntary amendment.  Courts may be reluctant to permit correction once litigation has begun. Alleged omissions can become fodder for invalidity defenses and counterclaims.  In essence, the penalty for an inventorship mistake becomes the potential loss of the entire patent  – not just administrative correction.  This disincentivizes openness and weakens protection for good-faith actors.

Easing the path to correcting inventorship would promote justice and clarity.  A reformed system could allow for prompt, non-punitive amendments.  This would preserve valid inventions, reward collaboration, and focus litigation on substantive issues rather than technicalities.  It would also align U.S. law more closely with the cooperative spirit of international patent systems, some of which allow correction through streamlined administrative procedures without threatening validity.

Ultimately, protecting inventors’ rights requires acknowledging the complexity of human collaboration.  A patent should stand or fall based on the merits of the invention – not on the perfect precision of a nameplate.  By reforming inventorship correction mechanisms, the United States can uphold both its legal standards and its commitment to encouraging innovation.

By Erik J. Osterrieder, Senior Attorney at KMD Law