February 20, 2012 Articles

Effects of the America Invents Act on Inventorship Disputes

Patent-owner disputes will be addressed by civil action in a district court, whereas patent applicant disputes will be addressed by derivation proceedings before the PTAB.

By Janelle D. Waack

Collaboration can be an effective way to develop ideas and products in business and academia. As the saying goes, two heads are better than one. However, sometimes a cooperative pooling of resources or a friendly intellectual exchange can sour as the sweet prospects of commercial value are tainted by an inventorship dispute. Such disputes can impair business relationships, cloud intellectual property rights, and lead to litigation.

Inventorship disputes are more common in the United States because our patent laws require inventors of claimed subject matter to apply for a patent in their own names. This requirement arises from the intellectual property clause of the U.S. Constitution, which states that, "The Congress shall have power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries" (emphasis added, capitalization in original). Intentionally failing to name, or incorrectly identifying, inventors can result in a patent being held invalid.

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