Publications

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 absolute 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 – softening the effects of inventorship errors committed in good faith by removing from defendants’ arsenal an otherwise effective defense against infringement. 2

Recently, though, the salutary effects of § 256 have begun to erode. The Federal Circuit’s ruling in Stark v. Advanced Magnetics, Inc.3 has opened the door for a new twist on the § 102(f) defense, which once again places a great burden on patentees to correctly identify the exact inventive entity on their applications.

This new defense can best be explained as an attempt to combine two legal maneuvers into a single step. In chess it might be called a “check and checkmate” move. First, the accused infringer provides evidence that the patent in suit contains an inventorship error – specifically an error of nonjoinder. 4 Once that defect has been established, the accused infringer then asserts that the patent cannot be corrected under § 256 because the error arose through deceptive intent on the part of the nonjoined inventor. In other words, the defendant argues that the patent is “uncorrectable” under § 256 and therefore invalid under § 102(f).

The effectiveness of this “uncorrectability” defense depends largely on how the court manages the burden of proof. If the court places the burden on the defendant to prove that the inventorship error arose through deceptive intent, then uncorrectability becomes nothing more than a defense of inequitable conduct. It will not derail an infringement claim unless the defendant can prove deceptive intent by clear and convincing evidence. If, however, the court places the burden on the plaintiff to show that the patent is, in fact, correctable under § 256, then uncorrectability becomes a very effective defense indeed. The defendant can bring an otherwise valid infringement claim to a halt unless, and until, the plaintiff comes forward with proof that the omitted inventor acted without deceptive intent.

In this article we explore the contours and implications of the uncorrectability defense. In Part I, we discuss the use of the defense in several district court cases, focusing particular attention on the courts’ tendency to place the burden of proof on defendants. In Part II, we examine the Federal Circuit’s recent decision in Pannu v. Iolab,5 which reversed this practice by placing the burden of proof on the plaintiff. In Part III, we analyze policy concerns raised by Pannu and the burgeoning use of the uncorrectability defense, as well as similar inventorship-related defense techniques.

I. The Uncorrectability Defense in the District Courts

A. Burroughs Wellcome Co. v. Barr Labs, Inc. (E.D.N.C. 1993)

Perhaps the first instance of an accused infringer attempting to assert uncorrectability as an affirmative defense arose in Burroughs Wellcome Co. v. Barr Labs, Inc.6 The central issue in Burroughs Wellcome was whether two National Institute of Health (NIH) scientists should have been named as co-inventors on several Burroughs Wellcome patents for AZT, a potential drug treatment for AIDS. One of the defendants, Barr Labs, had struck an agreement with NIH in which Barr received a license in exchange for litigating NIH’s putative rights in the AZT patents. The other defendant, Novopharm, had no such agreement with NIH.

Thus, Novopharm found itself in a predicament. Unlike Barr, it could not escape liability for infringement merely by proving nonjoinder of the two NIH scientists. Instead, it had to assert a defense that would invalidate the patents, or at least render them unenforceable. To do this, Novopharm asserted two defenses against Burroughs Wellcome – a counterclaim of inequitable conduct and an affirmative defense of “deceptive intent.” 7

With respect to its inequitable conduct counterclaim, Novopharm conceded that it had the burden of proof “to come forward with clear and convincing evidence that BW Co. intentionally engaged in inquitable conduct in the prosecution of its patents.” 8 However, with respect to its affirmative defense of deceptive intent, Novopharm argued that the plaintiff carried a “negative burden” to show that the nonjoinder was not the product of deceptive intent. Novopharm’s argument on this point clearly demonstrates that the “uncorrectability” defense is an attempt to combine two legal maneuvers into a single step:

Novopharm argues that, to reach the issue of deceptive intent, the court must assume that [the NIH scientists] should have been named as inventors; then, in order to correct the nonjoinder of inventors without invalidating the patents pursuant to 35 U.S.C. § 256, BW Co. must establish that the nonjoinder was not the product of deceptive intent. 9

The district court addressed the burden of proof issue directly. First, it noted that patents enjoyed a presumption of validity. Therefore, Novopharm had the burden of proving invalidity or unenforceability by clear and convincing evidence. Based on this logic, the court found “no legal basis for distinguishing between the burden of proof on a counterclaim of inequitable conduct and the burden of proof on an affirmative defense of deceptive intent.” 10

It is significant to note that Burroughs Wellcome was decided before the Federal Circuit’s decision in Stark. As will be discussed later, this may explain why the Burroughs Wellcome court was able to resolve the burden of proof issue so easily, while later courts seem to struggle with it.

B. PerSeptive Biotech, Inc. v. Pharmacia Biotech, Inc. (D. Mass. 1998)

In January 1998, the district court in PerSeptive Biotech, Inc. v. Pharmacia Biotech, Inc. 11 had another opportunity to address the burden of proof issue with respect to the uncorrectability defense. Unlike Bourroughs Wellcome, this case was decided after the ruling in Stark, which, as the district court noted, “fundamentally alter[ed] the legal landscape of proceeding pursuant to 35 U.S.C. § 256.” 12 Perhaps for this reason, the PerSeptive court had much more difficulty resolving the burden of proof issue than did the Burroughs Wellcome court.

PerSeptive brought suit against Pharmacia for patent infringement, alleging, inter alia, that Pharmacia 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 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.” 13 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.

Unfortunately, the PerSeptive court only obliquely addressed the more difficult 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 uncorrectability as an affirmative defense 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.” 14 Thus, in the end, the court seemed to place the burden on defendant to provide proof of deceptive intent on the part of omitted inventors. The court noted that “[w]ith respect to . . . the nonjoined and unnamed true co-inventors, exhaustive discovery has unearthed no hint of deceptive intent.” 15 In other words, 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.”

C. Pannu v. Iolab Corp. (S.D. Fla. 1997)

The district court decision in Pannu v. Iolab Corp.16 was handed down in February 1997. The Federal Circuit decision will be discussed in the next section.

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. 17

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.

Note that Iolab’s argument is essentially the same as those offered by the defendants in Burroughs Wellcome and PerSeptive. In each of these cases, the accused infringer attempted to combine proof of nonjoinder and an allegation of deceptive intent into a single “check and checkmate” defense. Once again, the district court rejected this attempt.

The court granted judgement as a matter of law in Dr. Pannu’s favor on Iolab’s nonjoinder and invalidity defenses. 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.

II. Recent Developments

A. The Federal Circuit’s Decision in Pannu v. Iolab Corp.

In August 1998, the Federal Circuit vacated the lower court’s order in Pannu and remanded the case for further proceedings. The court held that:

[w]hen a party asserts invalidity under § 102(f) due to nonjoinder, a district court should first determine whether there exists clear and convincing proof that the alleged unnamed inventor was in fact a co-inventor. Upon such a finding of incorrect inventorship, a patentee must invoke section 256 to save the patent from invalidity. 18

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. 19 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.” 20

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 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 here it most logically fell – on the defendant. We think that the district court’s instincts in Pannu were essentially correct. However, there is still a question of whether these instincts comport with the Federal Court’s ruling in Stark regarding the proper role of a court in managing § 256 motions.

B. 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? 21 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.” 22 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.” 23

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. 24 Despite such obvious differences, the Stark majority 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 perhaps now feel restrained from interjecting considerations of equity or judicial efficiency into § 256 motions. This might explain why the burden of proof issue, which was so easy to dispose of in 1993, proved so difficult to sort out in 1998. Under the Stark view, § 256 is to be treated as a mechanical procedure rather than a statutory provision that reflects policy concerns and supports 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. 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. ,25 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.26 (emphasis added)

Thus, the court placed the burden of proving lack of deceptive intent on the party seeking to correct inventorship, regardless of whether that party was the named patentee. This was also the rule applied by the Connecticut district court in Ethicon v. U.S. Surgical Corp.27

C. The Liberalized Law of Joint Inventorship

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 1984, a party was not generally considered a joint inventor unless he contributed substantially to each and every claim of a patent. 28 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.” 29 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. As the following discussion will show, there are at least two other techniques, in addition to the uncorrectability defense, by which accused infringers can capitalize on inventorship errors in a plaintiff’s patent, even those arising through innocent error.

1. Failure to Join All Co-Owners as Plaintiffs

   In Ethicon v. U.S. Surgical,30 plaintiff 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. 31 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. 32 Following that ruling, U.S. Surgical successfully moved to have 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. 33 A long standing procedural rule in patent law states that all co-owners of a patent must join voluntarily as plaintiffs in any suit against an alleged infringer. 34

   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 simply by refusing to join suit as a plaintiff. 35

2. The Best Mode Defense

   Even if a patentee prevails on the issue of good faith, the defendant still has another opportunity for a “check and checkmate” argument, in the form an affirmative best mode defense. As Pannu recognized, “[i]f the patent is corrected under section 256 [defendant may still assert a] defense based on the theory that the proper inventive entity failed to disclose its best mode.” 36 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, first paragraph, for failure to disclose the best mode.

   This once again raises the specter of a “death sentence” for inventorship errors – even those committed without deceptive intent. A best mode inquiry conducted by a patent attorney cannot be expected to encompass the knowledge of inventors theretofore unknown, unless the attorney is clairvoyant. 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 a joint inventor is irrelevant. Failure to disclose the best mode is an incurable defect. Presumably this would hold true regardless of whether it occurred intentionally or as a result of an innocent error of inventorship. 37

D. Summary of Inventorship-Related Defenses

The following table summarizes the inventorship-related defenses described in this paper.

• CHECK
  Defendant proves nonjoinder by clear and convincing evidence.

• CHECKMATE
  Nonjoined inventor refuses to join suit as a voluntary plaintiff. Suit cannot go forward because of rule requiring “voluntary joinder of all co-owners.” Ethicon v. U.S. Surgical.
  

• CHECK
  Defendant proves nonjoinder by clear and convincing evidence.

• CHECKMATE
  Nonjoined inventor refuses to join suit as a voluntary plaintiff. Suit cannot go forward because of rule requiring “voluntary joinder of all co-owners.” Ethicon v. U.S. Surgical.
  

• CHECK
  Defendant proves nonjoinder by clear and convincing evidence and provides some proof of deceptive intent. 38

• CHECKMATE
  Patent is uncorrectable under § 256 unless plaintiff can prove that the nonjoined inventor did not act with deceptive intent. Pannu v. Iolab Corp.

The Federal Circuit’s ruling in Pannu seems to further open the door for the types of defense tactics outlined above. 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 if the defendant can 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. 39

III. 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 is the “invoker” of § 256 and, thus, must bear the burden of showing lack of deceptive intent. 40

Likewise, in the case of an accused infringer asserting uncorrectability as an affirmative defense, it is the defendant who actually “invokes” § 256, albeit in an attempt 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. 41 Accordingly, “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 42 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 showing 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 though 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. 43 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.” 44 A defense of uncorrectability is no less technical than one of misjoinder or nonjoinder – indeed, it 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.” 45 Prior to Pannu, most courts characterized § 256 as a “liberalizing provision” and construed the statute broadly in favor of patentees. 46 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. 47 By putting the burden on patentees to show a lack of deceptive intent, the court has again given vitality to a highly “technical” defense aimed at invalidating patents. It would seem more consistent with the underlying policy of § 256 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, 48 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 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 errors. If anything, it would seem that inventorship errors should be treated lessseverely 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 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, 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 left to consider in the wake of Pannu. First, what is the nature of the “presumption” described in footnote 4? Will a mere scintilla of evidence pointing to deceptive intent be enough to overcome the presumption of good faith? This seems unlikely since the footnote refers to the need for “persuasive” evidence to the contrary. Perhaps footnote 4 will come to be interpreted as a strong presumption of good faith, one that can only be overcome by substantial evidence of deceptive intent. Oddly, though, that would seem to bring us back full circle to the rule of Burroughs Wellcome and PerSeptive; namely, defendants must always bear the burden of proving deceptive intent.

ENDNOTES

1. See MCV, Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 1570, 10 U.S.P.Q.2d 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.”).
2. See Patterson v. Hauck, 341 F.2d 131, 138, 144 U.S.P.Q. 481, 488 (C.C.P.A. 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.”).
3. Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 43 U.S.P.Q.2d 1321 (Fed. Cir. 1997).
4. Nonjoinder is the erroneous omission of one or more actual inventors. Misjoinder is the erroneous inclusion of one or more non-inventors.
5. Pannu v. Iolab Corp. 155 F.3d 1344, 47 U.S.P.Q.2d 1657 (Fed. Cir. 1998).
6. Burroughs Wellcome Co. v. Bar Labs Inc., 828 F. Supp. 1200, 29 U.S.P.Q.2d 1721 (E.D.N.C. 1993).
7. Id. at 1207, 29 U.S.P.Q.2d at 1726.
8. Id.
9. Id.
10. Id. at 1207, 47 U.S.P.Q.2d at 1726-7. The court also found that “Novopharm must prove by clear and convincing evidence sufficient facts to establish both its counterclaim of inequitable conduct and its affirmative defense of deceptive intent.”
11. Per Septure Biotech, Inc. v. Pharmacia Biotech, Inc., 12 F. Supp. 2d 69 (D. Mass. 1998).
12. Id. at 70.
13. Id. at 71.
14. Id.
15. Id.
16. Pannu v. Iolab Corp., 93-CV-6076 (S.D. Fla. Feb. 10, 1997).
17. 35 U.S.C.§ 102 (1997) states, in pertinent part, that “[a] person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented.”
18. Pannu v. Iolab Corp., 155 F.3d 1344, 1350, 47 U.S.P.Q.2d 1657, 1662 (Fed. Cir. 1998).
19. Other commentators have also interpreted this to be the holding of Pannu. e.g., Fed. Cir. Bar. Assoc., 1 FED. CIR. CASE DIGEST, No. 9, at 5 (Sept. 1998) (“To avoid invalidation of the patent, it became Pannu’s burden to cure the defective inventorship by showing no deceptive intent.”).
20. Pannu, 155 F.3d at 1351 n.4, 47 U.S.P.Q.2d at 1662 n.4.
21. 35 U.S.C. §256 Paragraph 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, issued a certificate correcting such error.” Paragraph 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.”
22. Stark, 119 F.3d at 1553, 43 U.S.P.Q.2d at 1323.
23. Id.
24. Stark, 119 F.3d at 1556, 43 U.S.P.Q.2d at 1326 (citing MCV Inc. v. King-Seeley Thermos Co., 870 F.2d 1568, 10 U.S.P.Q.2d 1287, 1289 (Fed. Cir. 1989).
25. Applied Medical Resources Corp. v. United States Surgical Corp., 967 F. Supp. 867 (E.D. Va. 1997).
26. Id.at 871 (emphasis added).
27. Ethicon Inc. v. United States Surgical Corp., 937 F. Supp. 1015 (D. Conn. 1996).
28. See, e.g., In re Sarett, 327 F.2d 1005, 30 U.S.P.Q. 474 (C.C.P.A. 1964); Rival Mfg. Co. v. Dazey Prods. Co., 358 F. Supp. 91, 177 U.S.P.Q. 432 (W.D. Mo. 1973).
29. Pub. L. 98-622, §104, 98 Stat. 3384, Nov. 8, 1984.
30. Ethicon, Inc. v. United States Surgical Corp., motion for jury trial denied,921 F. Supp. 901 (D. Conn. 1995), motion to correct inventorship granted, 937 F. Supp. 1015 (D. Conn. 1996), motion to dismiss granted, 954 F. Supp. 51 (D. Conn. 1997), aff’d, 45 U.S.P.Q. 1545 (Fed. Cir.) cert. denied, 119 S. Ct. 298 (1998).
31. 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).
32. 937 F. Supp. 1015 (D. Conn. 1996).
33. 954 F. Supp. 51 (D. Conn. 1997).
34. See Ethicon, 45 U.S.P.Q.2d at 1554. But see id. at 1564 (Newman, J., dissenting) (arguing that the “voluntary joinder” rule is incompatible with and unnecessary under FED. R. CIV. P. 19.)
35. Id.
36. Pannu,155 F.3d at 1351 n.5, 47 U.S.P.Q.2d at 1663 n.5.
37. The Pannu court did not reach this issue. In general, failure to disclose best mode is a fatal defect. However, some cases have held that knowledge of others (i.e., employees at the same company) cannot be imputed to an inventor. See, e.g., Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 34 U.S.P>Q.2d 1565 (Fed. Cir. 1995). It is unclear whether this rule would also be extended to knowledge possessed by nonjoined inventors. A purely objective standard would simply look to whether the best mode, as known to any inventor (named or unnamed), was disclosed at the time of filing.
38. Pannu leaves open the question of how much proof is needed to overcome the “presumption” of good faith. Footnote 4 states that “good faith is presumed in the absence of a persuasive showing of deceptive intent.” Pannu, 155 F.3d at 1351 n.4, 47 U.S.P.Q.2d at 1662 n.4. Therefore, more than a mere scintilla is probably needed. However, logic would dictate that the evidentiary standard is below the clear and convincing threshold-otherwise, the court simply would have assigned defendant the burden of showing deceptive intent by clear and convincing evidence.
39. For a general comment on this tactic, see Dale L. Carlson and James R. Barney, bv 5 INTELLECTUAL PROP. TODAY 11 (June 1998).
40. See, e.g., Applied Medical Resources, 967 F. Supp. 871.
41. Id.
42. 35 U.S.C. §282.
43. See generally 1 CHISUM ON PATENTS §2.03[4].
44. General Motors Corp. v. Toyota Motor Co., 667 F.2d 504, 507, 212 U.S.P.Q. 659, 662 (6th Cir. 1981).
45. Patterson v. Hauck, 341 F.2d 131, 138, 144 U.S.P.Q. 481, 488 (C.C.P.A.) 1965).
46. See, e.g., Standard Oil Co. v. Montedison, S.p.A. 206 U.S.P.Q. 676, 695 (D. Del. 1980) (“The policy behind this provision is to make the amendment remedy widely available.”).aff’d, 212 U.S.P.Q. 327 (3d Cir. 1981).
47. Pannu, 155 F.3d at 1350, 47 U.S.P.Q.2d at 1662.
48. 1 CHISUM ON PATENTS §2.04[4] offers the following scenario: A files an application for product X. A and B then file and 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.