The Federal Circuit, in Stark v. Advanced Magnetics, Inc., 119 F.3d 1551 (Fed. Cir. 1997), recently determined that correction of inventorship to an issued patent under 35 U.S.C. § 256 (1994) allows deletion of a named inventor whether that error occurred by deception or innocent mistake and the addition or substitution of an unnamed inventor so long as the unnamed inventor is free of deceptive intent.

The decision promotes postponing an inventorship contest until the patent issues and discourages an unnamed inventor from alleging deceptive intent on the part of the named inventor.

Section 256 provides, "Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Commissioner may . . . issue a certificate correcting such error."

In Stark, Plaintiff, Dr. David Stark ("Stark"), alleged that he was the sole inventor of the subject matter covered by one patent and the joint inventor of the subject matter disclosed in five other patents.

Stark's complaint requested correction of inventorship under § 256 and alleged fraud on the part of the patent applicant and Defendant, Advanced Magnetics, Inc. ("AMI"). AMI asserted that Stark's allegation of fraud precluded correction of inventorship because § 256 required both the applicant (AMI) and the inventor to have made an honest mistake.

The Federal Circuit compared § 256 and 35 U.S.C. § 116 (1994), which speaks to correction of inventorship during prosecution, to determine what party must be free from deceptive intent for correction of inventorship under § 256. Section 116 provides, "Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Commissioner may permit the application to be amended accordingly. . ."

Because of a comma found after the term "application" in § 116, the court determined that a lack of deceptive intent applied to all the parties involved during prosecution. The court found this comma "conspicuously absent from § 256," however, and determined that a lack of deceptive intent only applied to the unnamed inventor under § 256. Thus, § 256 only requires an inquiry into the intent of the unnamed inventor.

Stark, however, left an important question unanswered­enforceability of the patent. Although the issue was not before the court, the Federal Circuit acknowledged that an inventive entity commits inequitable conduct in filing a false oath with respect to inventorship and, therefore, the patent would be unenforceable.

Although Stark asserted that the patent should be unenforceable only to those who acted with deceptive intent, the court stated, "One bad apple spoils the entire barrel." Thus, although correction of inventorship may be performed under § 256, allegations of fraud on the part of the patent applicant may render the patent unenforceable even by an innocent inventor or co-inventor.

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