How the Federal Circuit Is Rebuilding Inventorship Law After the AIA

"The court read § 256(b)'s savings clause by its 'necessary and opposite implication:' if an inventorship error cannot be corrected, the patent is invalid."

"Before the America Invents Act, Section 102(f) made correct inventorship a 'condition of patentability,' while Section 282(b) made conditions of patentability available as defenses."

"The AIA repealed § 102(f) and did not replace it, removing the longstanding requirement that inventorship errors arise 'without any deceptive intention' before correction could be granted."

"Almost fifteen years later, the Federal Circuit still has not articulated a unified approach to inventorship invalidity under the post-AIA statute."

The Federal Circuit invalidated two patents in Fortress Iron v. Digger Specialties due to a missing coinventor. The court interpreted 35 U.S.C. § 256(b) to mean that if an inventorship error cannot be corrected, the patent is invalid. The ruling did not clarify the source of this invalidity rule within the Patent Act. The America Invents Act significantly altered the legal landscape, repealing Section 102(f) and removing the requirement for deceptive intention in correcting inventorship errors. The court has yet to establish a coherent theory of inventorship invalidity under the new statute.

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