Legal Definitions - uncorrectability defense

The uncorrectability defense is a specific legal argument used in patent infringement lawsuits. When a company or individual is accused of illegally using someone else's patented invention, they might raise this defense to argue that the patent itself is invalid and therefore cannot be enforced.

To successfully use this defense, the accused infringer must prove two key things:

• An actual co-inventor was left off the patent: This means someone who genuinely contributed to the invention, making them a rightful co-owner of the patent, was not listed on the official patent document.
• The omission was intentional and deceptive: Crucially, the defense must show that a person who was named on the patent deliberately and with deceptive intent omitted the true co-inventor's name. This intentional deception makes the patent fundamentally flawed and, under the law, "uncorrectable," meaning it cannot simply be fixed by adding the missing name. Because of this deceptive intent, the entire patent can be deemed unenforceable.

Here are some examples illustrating how this defense might apply:

• Startup Co-founder Dispute:

  Sarah and Tom co-founded a tech startup and developed a unique software algorithm. When it came time to file the patent, Tom, wanting sole ownership and control, intentionally filed the patent application listing only himself as the inventor, despite knowing Sarah's critical contributions. Years later, a larger tech company, "InnovateCorp," develops a similar algorithm and is sued by Tom for patent infringement. InnovateCorp could raise the uncorrectability defense. They would present evidence that Sarah was a true co-inventor and that Tom deliberately omitted her name with deceptive intent to mislead the patent office and gain an unfair advantage. If successful, the patent would be deemed invalid, and InnovateCorp would not be liable for infringement.

• Corporate Research & Development:

  Dr. Anya Sharma, a brilliant chemist at "PharmaGen Inc.," made a breakthrough discovery for a new drug compound. Her supervisor, Dr. Ben Carter, who only provided general oversight, filed the patent application for the compound, listing himself as the sole inventor. Dr. Carter knew Dr. Sharma was the primary inventor but intentionally excluded her to claim full credit and a substantial bonus. A rival pharmaceutical company, "BioSolutions," independently develops a similar compound and is subsequently sued by PharmaGen Inc. for patent infringement. BioSolutions could employ the uncorrectability defense. They would gather evidence demonstrating Dr. Sharma's essential role in the invention and Dr. Carter's deceptive intent in omitting her name from the patent. If proven, the patent would be rendered unenforceable, protecting BioSolutions from the infringement claim.

• Academic Collaboration:

  Professor Elena Rodriguez and her postdoctoral researcher, Dr. Mark Jensen, collaborated extensively on a novel medical device. Dr. Jensen developed a key component that made the device functional. However, when Professor Rodriguez filed the patent application, she intentionally omitted Dr. Jensen's name, believing her senior status entitled her to sole inventorship, despite knowing his critical contribution. A medical device manufacturer, "HealthTech Innovations," later develops a similar device and is sued by Professor Rodriguez for patent infringement. HealthTech Innovations could assert the uncorrectability defense. They would need to demonstrate that Dr. Jensen was a legitimate co-inventor and that Professor Rodriguez deliberately excluded him with deceptive intent. If the court finds this to be true, the patent would be invalidated, and HealthTech Innovations would not be found liable for infringement.