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Introduction

Prior to 1952, an inventorship error was a death sentence for an issued patent. Patents that failed to name the exact combination of persons responsible for inventing the claimed subject matter were deemed invalid as a matter of law under 35 U.S.C. § 102(f).1 Since misjoinder and nonjoinder were considered incurable defects in an issued patent, proof of these flaws constituted an affirmative and irrebutable defense against patent infringement, even if they occurred through innocent error.

The Patent Act of 1952 attempted to alleviate the harsh consequences of such inventorship errors, particularly those arising without deceptive intent. The 1952 Act added Section 256 to the patent statute, allowing correction of inventorship in patents that were (or should have been) issued to joint inventors. For many years, 35 U.S.C. § 256 achieved its intended purpose inasmuch as it softened the effects of inventorship errors, particularly those committed without bad faith, thus removing from defendants’ arsenal an otherwise effective defense against infringement. 2

Recently, though, the salutary effects of the 1952 Patent Act, including its attempt to minimize the draconian consequences of inventorship errors, have begun to erode. A new infringement defense is on the rise which once again places patentees at great peril for failure to correctly identify, upon application, the exact inventors responsible for the claimed invention. This new defense generally involves a factual showing of nonjoinder by the defendant, followed by an allegation of “uncorrectability” under 35 U.S.C. § 256 and a concomitant assertion of invalidity under 35 U.S.C. § 102(f).

In a recent patent infringement case, Pannu v. Iolab Corp.,3 the Federal Circuit for the first time entertained the notion that uncorrectability could properly be asserted as an affirmative defense against infringement. This article will explore the implications of the Pannu decision, in light of other recent Federal Circuit decisions, and analyze policy concerns raised by the burgeoning use of this new defense.

Pannu v. Iolab: Analyzing the Uncorrectability Defense

Dr. Pannu owned a patent for an improved intraocular plastic lens, for which he was the sole named inventor. He sued Iolab for patent infringement, seeking damages and injunctive relief. Iolab defended by alleging that the patent was invalid under 35 U.S.C. § 102(f) for plaintiff’s failure to join Dr. Link, a third party, as a joint inventor in the patent. 4

Dr. Pannu did not deny Iolab’s allegation of nonjoinder. Instead, he argued that even if Dr. Link was a joint inventor, the patent was still “correctable” under 35 U.S.C. § 256. Therefore, Iolab should still be liable for infringement unless it could prove by clear and convincing evidence that the patent was “uncorrectable.” Iolab rebutted that Dr. Pannu, as the patentee, had the burden of going forward with a § 256 motion. Therefore, Iolab contended that the burden should shift to Dr. Pannu to prove that the patent was “correctable.”

The district court agreed with Dr. Pannu, granting JMOL in his favor on Iolab’s nonjoinder and invalidity defenses. 5 Since Iolab had not submitted evidence to the court pointing to any deceptive intent on the part of the unnamed inventor, the district court reasoned that the patent could be corrected under § 256. Therefore, the court concluded that no reasonable jury could find that the patent was invalid under § 102(f) for failure to name Dr. Link as an inventor.

On appeal, however, the Federal Circuit vacated the lower court’s order and remanded the case for further proceedings. The Federal Circuit held that

Based on this reasoning, the Federal Circuit ruled that the district court erred by not sending the inventorship issue to the jury.

Essentially, the Federal Circuit’s ruling in Pannu places the burden of proof on the patentee to show that the patent is “correctable” under § 256. This, of course, includes the burden of proving that the unnamed inventor acted without deceptive intent. 6 The court noted in footnote 4 of its opinion that “[w]hile lack of deceptive intent, as a negative, may be hard for a patentee to prove . . . good faith is presumed in the absence of a persuasive showing of deceptive intent.” 7

Given this curious guidance from the Federal Circuit regarding the burden of proof, it is difficult to see what the district court in Pannu did wrong. According to the Federal Circuit, the plaintiff in Pannu had the burden of proving that Dr. Link, an unnamed inventor, acted without deceptive intent in the events leading to his failure to be named as an inventor. On the other hand, footnote 4 dictates that good faith on the part of a nonjoined inventor is presumed in the absence of persuasive proof to the contrary. How can these seemingly inconsistent statements be reconciled? The most logical conclusion, we think, is that footnote 4 is simply tantamount to placing the burden of proof on the defendant, not the plaintiff.

After all, Dr. Pannu certainly had no incentive to produce proof of deceptive intent, since by doing so he would have rendered his own patent invalid. Dr. Link had no incentive to reveal fraudulent intent on his own part, since he stood to gain co-ownership of a potentially valuable patent by simply signing on to a statement of good faith. Indeed, the only party who had any logical incentive to prove deceptive intent on the part of the unnamed inventor was Iolab, and during a full trial on the merits it failed to produce any such evidence.

It would seem, then, that the district court simply looked at the respective interests of the parties and put the burden where it most logically fell — on the defendant. We think that the district court’s instincts in Pannu, regarding the burden of proof, were essentially correct. Unfortunately, these instincts do not necessarily comport with the Federal Circuit’s ruling in Stark v. Advanced Magnetics Inc.8 regarding the proper role of a court in managing § 256 motions.

Stark v. Advanced Magnetics: A Mechanistic View of § 256

Among the important issues addressed in Stark was the following question: does § 256 impose different substantive requirements depending upon whether correction of inventorship is initiated by court action or by petition to the Patent Office? 9 The majority in Stark attacked the notion that the reference to court actions in the second paragraph of § 256 “somehow freed courts of the constraints included in the remainder of section 256.” 10 To the contrary, the majority held that, “section 256 expressly applies the standards of the entire section, including the first paragraph, to both administrative and judicial proceedings.” 11

Judge Plager, concurring in the result but dissenting in the outcome, criticized the majority for failing to reconcile important procedural differences between § 256 actions brought in court and those initiated administratively in the Patent Office. For instance, as the majority recognized, a court can order correction of inventorship without the consent of all parties, whereas the Patent Office cannot. 12 Despite such obvious differences, the majority in Stark nevertheless treated § 256 as a “one-size-fits-all” provision that operates identically whether invoked as a motion in a legal proceeding or an administrative procedure in the Patent Office.

Because of this ruling, district courts are now seemingly restrained from interjecting considerations of equity and judicial efficiency into § 256 motions. Under the Stark view, § 256 is apparently to be treated as a mechanical procedure rather than a statutory provision permitting some degree of judicial discretion.

Nonetheless, as revealed by the circular logic underlying footnote 4 of the Pannu decision, § 256 is not a one-size-fits-all provision, as the majority in Stark implied. Indeed, important differences arise depending on who invokes § 256, in what forum, and for what purpose. Courts have long recognized, for instance, that when an action is brought against a patent owner by a party claiming to be a joint inventor, it is the party seeking to correct inventorship, not the patentee, who bears the burden of satisfying all of the requirements of § 256. This is true even when the motion to correct inventorship is brought as a counterclaim by a defendant in an infringement suit.

For example, in Applied Medical Resources Corp. v. United States Surgical Corp., the District Court for the Eastern District of Virginia applied the following rule: “the party seeking to correct inventorship by adding an inventor must prove by clear and convincing evidence (i) that the omitted person was a joint inventor; (ii) that the omission was the result of error; and (iii) that the omission was without deceptive intent.” 13 (emphasis added). This was also the rule applied by the Connecticut District Court in Ethicon v. United States Surgical.14

Joint Inventorship Has Become Easier to Prove

The holding in Pannu regarding the uncorrectability defense would be less troubling if it were not for a significant change in the law of joint inventorship that occurred in 1984. Prior to that year, a party was not generally considered a joint inventor unless he contributed substantially to each and every claim of a patent. 15 This judicially-created requirement, often called the “all claims” rule, presented a significant bar to parties claiming to be joint inventors in an issued patent. Consequently, it was quite difficult for defendants to make out a clear and convincing case of nonjoinder.

In 1984, however, Congress amended 35 U.S.C. § 116 to allow parties to apply as joint inventors “even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” In effect, the 1984 amendment to § 116 made it comparatively easy for defendants to prove nonjoinder, even under the clear and convincing standard.

Consequently, the search for unnamed inventors has become a much more viable (and profitable) tactic for defendants in patent infringement suits. For example, in Ethicon v. United States Surgical,17 Ethicon attempted to enjoin U.S. Surgical, from manufacturing or selling a “safety trocar” that allegedly infringed two claims of an Ethicon patent. While the suit was pending in district court, U.S. Surgical found Mr. Choi, an electronics technician who claimed to have collaborated on the safety trocar project but was not named as a co-inventor. U.S. Surgical immediately purchased from Mr. Choi a retroactive license to manufacture the trocar claimed in the patent, together with an agreement from Mr. Choi to assist in any legal proceedings relating thereto. 18 U.S. Surgical then moved to correct inventorship of the Ethicon patent by adding Mr. Choi as a co-inventor under 35 U.S.C. §256. The district court found that Mr. Choi had, indeed, contributed to two of the 55 claims of the Ethicon patent and ordered that he be added as a named inventor. 19 Finally, U.S. Surgical had the infringement complaint dismissed on the grounds that Mr. Choi, having now been deemed a necessary plaintiff in the infringement suit, was unwilling to consent to the suit against U.S. Surgical. 20 The Federal Circuit, over a sharp dissent by Judge Newman, upheld the district court’s ruling, conceding that a joint inventor, even one who was a relatively minor contributor to the overall invention, could effectively prevent other owners from enforcing the patent against an alleged infringer. 21

The Federal Circuit’s ruling in Pannu seems to further open the door for this type of defense tactic. Essentially, accused infringers are allowed to capitalize on the lower inventorship hurdle that resulted from the 1984 amendment to 35 U.S.C. § 116. If a defendant can “capture” an unnamed inventor by entering into a contingent cooperation agreement, as did U.S. Surgical with Mr. Choi, and also shift the burden of proof to the plaintiff as required by Pannu, an infringement suit may be successfully stopped in its tracks. If the captured inventor refuses to cooperate in the plaintiff’s effort to correct inventorship, and the defendant sets forth even a weak case of deceptive intent attributable to the captured inventor, the plaintiff may find it impossible to sustain its burden of proving that the nonjoined inventor acted without deceptive intent. 22

The Best Mode Defense

Even if a patentee prevails on the issue of good faith, the defendant has still another opportunity to stage a coup-d’etat and deal a death blow to plaintiff’s infringement claim, in the form of an affirmative best mode defense. As Pannu recognized, “[i]f the patent is corrected under section 256 [defendant may assert a] defense based on the theory that the proper inventive entity failed to disclose its best mode.” 23 In other words, if it can be proven by clear and convincing evidence that an unnamed inventor knew of a superior mode of operation of the invention that was not identified in the application, then the patent may be invalidated under § 112 ¶ 1 for failure to disclose the best mode.

This raises the specter of yet another “death sentence” defect in an issued patent. A best mode inquiry conducted by a patent attorney cannot reasonably be expected to encompass the knowledge of inventors theretofore unknown, unless the attorney is clairvoyant or the named inventor has a good crystal ball. Yet, when an affirmative best mode defense is asserted, the question of whether any of the parties knew at the time of filing that the unnamed inventor was, in fact, a joint inventor is apparently irrelevant. Failure to disclose the best mode is an incurable defect, regardless of whether it occurred intentionally or as a result of an innocent error of inventorship. This puts even more teeth into the uncorrectability defense, especially for those defendants who manage to “capture” an unnamed inventor who will testify that he knew of a better mode than that actually disclosed in the patent application.

Managing the Uncorrectability Defense

To illustrate the difficulty in managing the burden of proof in an uncorrectability defense, consider how one court handled the task prior to the ruling in Pannu. In January 1998, the district court in PerSeptive Biotech, Inc. v. Pharmacia Biotech, Inc.24 partially vacated an earlier order to correct inventorship in light of “a new standard articulated in [Stark] which fundamentally alters the legal landscape of proceeding pursuant to 35 U.S.C. § 256.” 25

PerSeptive brought suit against Pharmacia for patent infringement, alleging, inter alia, that Pharmcia had infringed several of PerSeptive’s patents for perfusive chromatography. As an affirmative defense, Pharmacia alleged that the subject patents were invalid because PerSeptive had failed to name certain third party inventors as joint inventors on the patents. The critical question was whether PerSeptive could correct the patents under § 256 or whether they were “uncorrectable” due to deceptive intent.

The PerSeptive court acknowledged that, according to Stark, “the proper focus of a Section 256 hearing is not on the intent of the named inventors [but rather on] the intent of the nonjoined inventor.” 26 Thus, it concluded that Pharmacia’s allegations of deceptive intent on the part of named inventors must be examined under the inequitable conduct doctrine, and thus defendants must bear the burden of proving deceptive intent by clear and convincing evidence.

While this is a correct reading of Stark, the PerSeptive court skirted a much more difficult and equally important question; namely, who had the burden of proving lack of deceptive intent on the part of the nonjoined inventors? Must the patentee prove that the nonjoined inventor acted without deceptive intent, or does the party putting forth nonjoinder as an affirmative defense against infringement have the burden of proving deceptive intent by the unnamed inventor?

After lamenting that the issue was “complicated” because the nonjoined inventors declined to intervene in the proceedings, the court ultimately concluded that PerSeptive’s patents were “correctable . . . because there is no evidence of deceptive intent on the part of the nonjoined inventors.” 27 In the end, the court seemed to place the burden on defendant to prove deceptive intent on the part of omitted inventors, noting that “[w]ith respect to . . . the nonjoined and unnamed true co-inventors, exhaustive discovery has unearthed no hint of deceptive intent.” 28 To wit, in the absence of proof (or disproof) that the omitted inventors acted with deceptive intent, the court concluded that PerSeptive’s patents were correctable by “default.” This, of course, is contrary to the Federal Circuit’s holding in Pannu.

Policy Considerations

There seems to be something awry with the result in Pannu. Part of the problem is the court’s reliance on a mechanistic interpretation of § 256 as taught in Stark. The syllogism that logically follows from the Stark interpretation is that § 256 must always be “invoked” by a patentee, whether in the context of an administrative proceeding or a court action, and regardless of the patentee’s legal stance as plaintiff or defendant. Therefore, the patentee must always bear the burden of showing lack of deceptive intent on the part of a nonjoined inventor.

This syllogism is illogical, however, when the patentee is resisting a change in inventorship. For instance, when an allegedly nonjoined inventor brings suit against a patentee, most courts have concluded, quite readily, that the party seeking to be added to the patent “invokes” § 256 and bears the burden of showing lack of deceptive intent. 29

Likewise, in the case of an accused infringer asserting uncorrectability as an affirmative defense, it is the defendant who actually “invokes” § 256, albeit in reverse, so as to invalidate the plaintiff’s patent. It seems reasonable, therefore, to expect the defendant to bear the burden of proving that the nonjoined inventor did, in fact, act deceptively. Indeed, there are a number of policy reasons for instituting such a rule.

First, 35 U.S.C. § 282 embodies a policy that an issued patent enjoys a presumption of validity. This presumption extends not only to the claims, but also to the inventorship stated on the face of the patent. 30 Accordingly, “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 31 Since the uncorrectability defense is aimed at establishing invalidity of an issued patent, § 282 seems to mandate that a party asserting uncorrectability must bear the burden of establishing the entire defense, including a showing of deceptive intent on the part of a nonjoined inventor. In other words, the cloak of § 282 should be broad enough to encompass, not only the presumption that the named inventors are the correct inventors, but also the presumption that any errors in inventorship occurred through innocent mistake and not through deceptive intent. Inventorship of an issued patent should always be presumed “correctable,” unless proven otherwise by clear and convincing evidence.

Second, courts have long harbored a policy disfavoring “technical” defenses such as misjoinder and nonjoinder. 32 As one court noted, “[s]uch defenses are highly technical; courts disfavor these defenses on the strength of the legal presumption that the inventors named in a patent are the true ones. 33” A defense of uncorrectability is no less technical than one of misjoinder or nonjoinder and, indeed, is perhaps more technical. Likewise, failure to disclose the best mode can be viewed as a technical defense, particularly if such failure resulted solely through innocent nonjoinder of a third party. It should logically follow, therefore, that each element of an uncorrectability defense should be subject to a clear and convincing evidentiary standard, including allegations of deceptive intent on the part of nonjoined inventors.

Third, the legislative history of § 256 reveals a congressional intent aimed at “removing technical grounds for attacking the validity of patents by reason of the erroneous naming of inventors.” 34 Prior to Pannu, most courts characterized § 256 as a “liberalizing provision” and construed the statute broadly in favor of patentees. 35 In contrast, the Pannu court interpreted § 256 as a “savings provision” and characterized it as a last-ditch mechanism for saving a patent from invalidity. By putting the burden on patentees to show a lack of deceptive intent, the court is again giving vitality to a highly “technical” defense aimed at invalidating patents. It would seem more consistent with the underlying policy of § 256, therefore, to require accused infringers who assert an uncorrectability defense to prove, at every step, that the patents they are accused of infringing are indeed invalid.

Finally, the Pannu decision seems to beg the question, why are we concerned with the good faith or deceptive intent of nonjoined inventors anyway? After all, a much more prevalent problem is that of named inventors deceptively omitting their co-inventors in order to avoid joint ownership or a statutory bar. Yet, as the Stark decision pointed out, § 256 does not require an inquiry into the good faith of named inventors. Indeed, PerSeptive held that allegations of bad faith on the part of named inventors must be made under a claim of inequitable conduct, not under § 256.

So, why allow allegations of bad faith on the part of omitted inventors to be made under § 256? One wonders just how common it is for an inventor to fraudulently omit himself from a patent. Professor Chisum suggests one possible motivation for doing so, but typically the deceptive intent is actually “shared” among both the named and the nonjoined inventors. Since the problem of bad faith on the part of named inventors is addressed exclusively (and adequately) under the inequitable conduct doctrine, why not treat bad faith among nonjoined inventors in the same manner?

Conclusion and Outlook

In this era of liberalized joint inventorship, it is ironic to see a trend towards castigating patentees more severely for committing inventorship and best mode errors. If anything, it would seem that inventorship and best mode errors should be treated less severely now than they were prior to the 1984 amendment to § 116. After all, the chances are much greater today, in light of the 1984 amendment, that a patentee will fail to recognize the assistance of a technician, co-worker, or graduate student as rising to the level of joint inventorship.

Recent Federal Circuit decisions construing § 256, especially Pannu, place an undue burden on patentees facing invalidity defenses of nonjoinder and “uncorrectability.” We believe that the burden of going forward with such defenses should always be on the alleged infringers, even though part of their defense may necessitate the plaintiff’s correction of nonjoinder under § 256.

Optimally, Congress should revisit § 256 to ensure that it still achieves its original purpose in light of the 1984 amendment to § 116. For instance, a much cleaner and more equitable system might be created if § 256 were simply amended to allow all inventorship errors to be corrected, without regard to deceptive intent. Allegations of bad faith, including deceptive intent on the part of nonjoined inventors, would be handled under the inequitable conduct doctrine. Such a change would preserve the original intent of § 256, which was to provide patentees with a liberal method of correcting inventorship errors, while still preserving the general policy against fraud and inequitable conduct before the Patent Office. Furthermore, the burden of proof would clearly and consistently fall on defendants to prove deceptive intent on the part of any inventor, including nonjoined inventors, whenever patent invalidity is alleged.

Another legislative change that may warrant attention is a provision to preserve the integrity of an issued patent, vis-à-vis the best mode requirement of § 112, once a change in inventorship has been entered. In other words, if the best mode disclosed in the patent application was the best mode envisioned by the originally named inventors, then the later addition of other inventors would not subject the patent to attack for failing to disclose the best mode known only to the nonjoined inventors. Of course, allegations of deceptive intent, including intentional suppression of a known best mode, could still be leveled under the inequitable conduct doctrine.

Meanwhile, while we wait for Congress to revisit § 256, there are a few things that patent counsel can do now to protect their patents from being rendered “uncorrectable.” Proper patent preparation is paramount. First, when in doubt, err on the side naming too many inventors rather than too few. In light of the Stark ruling, it is easier to correct misjoinder than it is to correct nonjoinder because an inquiry into deceptive intent is not required. Second, when in doubt, err on the side of an overly expansive best mode disclosure. While in the short run this may seem to be an undesirable technique, especially if the applicant is conducting continuing research on the same technology, it may ultimately save the day in the face of an affirmative uncorrectability defense.

Finally, and perhaps most importantly, patent owners should always undertake an exhaustive search for potentially nonjoined inventors prior to initiating any legal action against a suspected infringer. Inventorship errors that would otherwise be simple to correct at the PTO may become insurmountable when asserted by a defendant, in the form of an affirmative uncorrectability defense.

Endnotes

Copyright 1998 James R. Barney and Dale L. Carlson. Mr. Carlson is a partner in the law firm of WIGGIN & DANA in New Haven, CT. Mr. Barney is a third year law student at Yale Law School and an intern at WIGGIN & DANA. The views herein are solely those of the authors and should not be attributed to WIGGIN & DANA.

• See MCV, Inc. v. King-Seeley Thermos Co., 10 USPQ2d 1287, 1289 (Fed. Cir. 1989) (“Before the enactment of section 256, patentees and their assignees committed inventorship errors at their peril; misjoinder or nonjoinder of an inventor rendered the patent invalid.”)
• See Patterson v. Hauck, 144 USPQ 481, 488 (CCPA 1965) (“Section 116, together with section 256 with which it should be read, was added to the law in the 1952 revision for the purpose of removing technical grounds for attacking the validity of patents by reason of the erroneous naming of inventors, on which point the prior law was very strict.”)
• Pannu v. Iolab Corp, 47 USPQ2d 1657 (Fed. Cir. 1998).
• 35 U.S.C. § 102 (1997) states in pertinent part, “[a] person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented.”.
• Pannu v. Iolab Corp., 93-CV-6076 (S.D. Fla., Feb. 10, 1997).
• Other commentators have also interpreted this to be the correct holding of Pannu. See, e.g. FED. CIR. BAR ASSOC., 1 Federal Circuit Case Digest No. 9, 5 (Sep. 1998) (“To avoid invalidation of the patent, it became Pannu’s burden to cure the defective inventorship by showing no deceptive intent.”)
• Pannu, 47 USPQ2d at 1662, n.4.
• Stark v. Advanced Magnetics, 43 USPQ2d 1321 (Fed. Cir. 1997).
• 35 U.S.C. § 256 (1997) ¶ 1 states in part that “the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.” ¶ 2 states in part that “[t]he court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned.”
• Stark v. Advanced Magnetics, 43 USPQ2d at 1323,
• Id.
• Stark, 43 USPQ2d at 1326, citing MCV Inc. v. King-Seeley Thermos Co., 10 USPQ2d 1287, 1289 (Fed. Cir. 1989).
• Applied Medical Resources Corp. v. United States Surgical Corp., 967 F.Supp. 867, 871 (E.D. Va. 1997).
• Ethicon v. United States Surgical, 45 USPQ2d 1545 (Fed. Cir. 1998).
• See, e.g., In re Sarett, 327 F.2d 1005, 140 USPQ 474 (CCPA 1964); Rival Mfg. Co. v. Dazey Prods. Co., 358 F.Supp. 91, 177 USPQ 432 (W.D. Mo. 1973);
• Pub. L. 98-622, §104, 98 Stat. 3384, Nov. 8, 1984.
• Ethicon, Inc. v. United States Surgical Corp., motion for jury trial denied 921 F.Supp. 901 (D.Conn. 1995), motion to correct inventorship granted 93 F.Supp. 1015 (D.Conn. 1996), motion to dismiss granted 954 F.Supp. 51 (D.Conn. 1997), aff’d 45 USPQ 1545 (Fed. Cir. 1998).
• U.S. Surgical agreed to pay Choi $300,000 on execution of the agreement and to make future payments of up to $1 million contingent on the outcome of the litigation. The terms of the license purported to make it retroactive in the sense that U.S. Surgical was relieved of any liability stemming from past infringement of the trocar patent. See 937 F.Supp. 1015, 1019 (D.Conn. 1996).
• 937 F.Supp. 1015 (D.Conn. 1996).
• 954 F.Supp. 51 (D.Conn. 1997).
• Ethicon v. United States Surgical, 45 USPQ2d 1545 (Fed. Cir. 1998).

1. For a general comment on the inequity of this type of tactic in the post-1984 scheme of patent ownership among joint inventors, see Dale L. Carlson and James R. Barney, Who Owns What’s in Your Patent?, INTELLECTUAL PROP. TODAY (June 1998).
2. Pannu, 47 USPQ2d at 1663, n. 5.
3. PerSeptive Biotech, Inc. v. Pharmacia Biotech, Inc., 1998 WL 206040 (D.Mass 1998).
4. Id. at 1.
5. Id.
6. Id.
7. Id. at 2.
8. See, e.g., Applied Medical Resources, 967 F.Supp. at 871.
9. Applied Medical Resources, 967 F.Supp. at 871.
10. 35 U.S.C. § 282 (1997)
11. See generally, 1 CHISUM ON PATENTS §2.03[4].
12. General Motors Corp. v. Toyota Motor Co., 212 USPQ 659, 662 (6th Cir. 1981).
13. Patterson v. Hauck, 144 USPQ 481, 488 (CCPA 1965)
14. See, e.g., Standard Oil Co. v. Montedison, S.p.A., 206 USPQ 676, 695 (D.Del. 1980) aff’d 212 USPQ 327 (3d Cir. 1981) (“The policy behind this provision is to make the amendment remedy widely available.”)
15. 1 CHISUM ON PATENTS § 2.04[4] offers the following scenario: A files an application for product X. A and B then file an application less than one year later on product Y, an improvement on X. If A and B file jointly, their application may be rejected as obvious in light of the patent for X issuing to A. However, this rejection may be avoided if the patent for Y is filed in A’s name alone since A’s prior patent would not count as § 103 prior art against his later application.