Legal Definitions - motion to correct inventorship

A motion to correct inventorship is a formal request made during a patent legal dispute, such as an interference proceeding, to add one or more individuals who were previously unnamed as co-inventors to a patent application or an existing patent.

Accurate inventorship is crucial in patent law because it determines who legally owns the invention and has rights to the patent. If the initial list of inventors is incomplete, a formal motion is required to rectify the error and ensure all rightful contributors are recognized.

• Example 1: Overlooked Team Member

  Imagine a research team at a pharmaceutical company developing a new drug compound. Dr. Anya Sharma made a critical conceptual breakthrough that enabled the compound's stability, but due to an administrative oversight during the initial patent application drafting, her name was not included on the list of inventors. Later, during a dispute with another company claiming similar technology, the company realizes Dr. Sharma's contribution is essential to proving their invention's originality. They would file a motion to correct inventorship to formally add Dr. Sharma as a co-inventor, ensuring her legal recognition and strengthening their patent claim.

• Example 2: Post-Acquisition Discovery

  A small tech startup, "InnovateCo," develops a groundbreaking data compression algorithm and files a patent application. A larger corporation, "GlobalTech," later acquires InnovateCo. During GlobalTech's due diligence and review of InnovateCo's intellectual property, they discover detailed lab notebooks and emails indicating that a former intern, Leo Chen, made a significant and inventive contribution to a key component of the algorithm, but was never listed. To ensure the patent's validity and proper ownership, GlobalTech would initiate a motion to correct inventorship to include Leo Chen as a co-inventor on the patent application, even if it's during a subsequent challenge or review process.

• Example 3: Collaborative University Research

  Two university professors, Dr. Lee and Dr. Kim, collaborate on a project to create a novel solar panel design. They file a patent application listing only themselves as inventors. However, during a subsequent review by the university's technology transfer office, or perhaps in response to a challenge from a competing research group, it comes to light that a graduate student, Maria Rodriguez, developed a crucial and inventive modification to the panel's material composition that was essential for its efficiency. The university would then file a motion to correct inventorship to add Maria Rodriguez to the patent application, acknowledging her inventive contribution and ensuring the patent accurately reflects all creators.