Friday, June 5, 2009

To sue under 35 U.S.C. § 256 Inventor must have sufficient financial interest to have standing

In Larson v. CORRECT CRAFT, a joint inventor sued to rescind the assignments he had signed, which gave ownership to the company that employed him, and to remove two other named co-inventors. The court dismissed the case for lack of federal jurisdiction because he did not have standing to sue under 35 U.S.C. § 256 to correct inventorship. The court stated that his financial interest was contingent upon rescission of the assignments and that there was no financial interest that would change if he was able to correct inventorship since the assignments were not related to any increased financial interests.

This was in contrast to Chou v. Univ. of Chi., 254 F.3d 1347, 1358 (Fed. Cir. 2001) where the inventor wanted to be added. There the inventor was already under an obligation to assign so the issue did not involve ownership but being a named inventor gave the inventor access to royalties and other financial streams. Therefore, in Larson, there was no sufficient injury until the assignments were rescinded, if they were at all, to have standing.

There was some suggestion about reputational interest being sufficient for standing but that was not pleaded so they left that question open--that is whether someone's reputation as an inventor or being a sole inventor is enough to give standing.

The full opinion can be found here.