Narrative Opinion Summary
This case involves a dispute over the correct inventorship designation of two U.S. patents held by Fina Technology, Inc. and Fina Oil and Chemical Company. The parties sought judicial clarification on whether a settlement agreement allowed for the alteration of inventor order on the patents. Initially, a district court order allowed changes in inventorship, prompting Dr. Ewen to appeal, arguing that the court lacked statutory authority under 35 U.S.C. § 256. The appellate court sided with Dr. Ewen, vacating the district court's decision and emphasizing that § 256 does not permit altering the order of inventors. Upon remand, the district court again ruled in favor of changing the order, leading to another appeal. The appellate court reiterated that the district court lacked the power to make such changes under both §§ 256 and 255, as these sections do not cover altering inventor order. The court concluded that any such changes need to be addressed through administrative procedures, not judicial intervention, and vacated the district court's order, remanding the case for proceedings consistent with its opinion.
Legal Issues Addressed
Authority of District Courts in Patent Correctionssubscribe to see similar legal issues
Application: The court emphasized that district courts are not authorized to change the order of inventors on patents, as this is governed by the original patent application process.
Reasoning: This section does not permit district court actions for such corrections, nor does it apply to the order of inventors, which is determined by the original oath or declaration.
Correction of Clerical Errors under 35 U.S.C. § 255subscribe to see similar legal issues
Application: The appellate court found that the order of inventors does not qualify as a clerical error under § 255 and therefore cannot be amended through judicial proceedings.
Reasoning: The order of inventors does not constitute a clerical error as defined by § 255, and thus, cannot be amended through judicial proceedings.
Correction of Inventorship under 35 U.S.C. § 256subscribe to see similar legal issues
Application: The appellate court determined that the district court lacked the authority to alter the order of inventors on an issued patent under 35 U.S.C. § 256.
Reasoning: Under 35 U.S.C. § 256, two types of inventorship errors are acknowledged: misjoinder and nonjoinder. However, § 256 does not empower district courts to direct the Director to alter the order of inventors on an issued patent.