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The recent Inline Plastics v. Lacerta decision underscores a critical point for patent owners: failure to correctly identify all inventors can lead to a finding of inequitable conduct and render entire patents – or even entire patent families – unenforceable.
Background
Inline Plastics, a Connecticut-based manufacturer of tamper-evident food containers, faced a major setback involving its Safe-T-Fresh product line. These containers, protected by five U.S. patents, feature an innovative tear strip integrated into the hinge that signals tampering when severed.
Inline sued Lacerta in 2018 for infringement. After years of litigation, the case culminated in a jury's finding of infringement by Lacerta of Inline's patents. The Massachusetts federal court ultimately found Inline's patents unenforceable due to intentional omission of inventors.
What Is Inequitable Conduct?
Inequitable conduct is a patent-kill switch: if proven, it renders an entire patent unenforceable and may taint related patents in the same family. It arises when someone involved in prosecution misrepresents or withholds material information with the specific intent to deceive the USPTO.
Material information is interpreted broadly and may include:
- Prior art,
- Prior public uses or offers for sale,
- Enablement issues,
- Derivation or prior invention by another, and
- Errors in inventorship.
To establish inequitable conduct, an accused infringer must prove by clear and convincing evidence that the applicant (1) misrepresented or withheld material information and (2) did so with the specific intent to deceive the USPTO.
What Happened in Inline Plastics
- In 2002, Inline hired 4Sight, Inc. to develop new packaging concepts. 4Sight delivered design drawings in October 2002 featuring key elements later claimed in Inline's patents.
- Inline claimed an invention date of late 2002, but its named inventors did not begin work until November after receiving 4Sight's drawings.
- In April 2003, 4Sight requested a referral to patent attorneys. Inline then cut off contact and filed a provisional application in July 2003 without naming 4Sight inventors.
Court's Conclusion
The court held that Inline committed inequitable conduct by intentionally omitting the true inventors. Factors supporting this conclusion included:
- Evidence that 4Sight conceived key features before Inline's inventors began work.
- Backdating of the invention date to exclude 4Sight's contributions.
- Contradictory testimony from Inline's named inventors.
- Deliberate termination of communication with 4Sight after its request for patent attorney referrals.
- Non credible testimony from Inline's director of the project, who provided detailed recollections during invalidity proceedings but denied knowledge or memory during the inequitable conduct trial.
Inventorship vs. Ownership
These terms are often conflated but legally distinct:
" Inventorship is a legal determination identifying who
conceived the invention as claimed. Every true inventor must be
named.
" Ownership refers to who owns the rights to the patent
– commonly via assignment. A company may own a patent even if
employees or third party collaborators are inventors.
Even with a valid assignment, a third party inventor must still be named as an inventor on a U.S. patent.
Who Qualifies as an Inventor in a U.S. Patent Application?
Under U.S. patent law, an inventor is defined as a natural person who contributed to the conception of at least one claim in the patent application. Conception, the formation of a definite and permanent idea of the invention, is the touchstone of inventorship.
Key Principles:
- Individuals who merely follow instructions, conduct experiments, or assist with reducing the invention to practice do not qualify as inventors unless they contributed intellectually to the claimed subject matter.
- Only human beings may be named as inventors; companies and AI systems cannot.
- Joint inventorship requires only that each inventor contribute to one claim element. Contributions need not be equal, and inventors do not need to work at the same time or in the same location.
The USPTO requires that all and only the true inventors be named. Although inventorship can typically be corrected later, uncorrected errors, especially when intentional, can jeopardize enforceability.
Correcting Inventorship
Inline's omission of the 4Sight inventors was deemed intentional and deceptive (the type of conduct that cannot be cured through ordinary USPTO correction procedures). For most applicants, however, inventorship errors are fixable:
Pending Applications
Under 35 U.S.C. § 116 and 37 C.F.R. § 1.48, inventorship may be corrected at any time before issuance when an inventor is:
- Unintentionally omitted,
- Mistakenly included, or
- Impacted by claim amendments.
Corrections generally require:
- A Rule 1.48 request,
- An updated Application Data Sheet, and
- Processing fee.
Issued Patents
Under 35 U.S.C. § 256 and 37 C.F.R. § 1.324, inventorship may be corrected:
- By USPTO petition (when all parties agree), or
- By court order (when they do not).
Corrections are appropriate where the error resulted from oversight, misunderstanding, or clerical mistake, and where each named inventor contributed to at least one claimed invention.
The Bottom Line
Inventorship errors are avoidable but carry serious consequences, including the risk of inequitable conduct and unenforceability. Work closely with patent counsel and collaborators early and often to ensure inventorship is accurate and documented.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
