• Summary of Hor v. Chu, 2011-1540
  • February 21, 2013
  • Law Firm: Sughrue Mion PLLC - Washington Office
  • Federal Circuit, November 14, 2012, 2011-1540

    The issue before the Court in this case is whether the laches period for a claim for correction of inventorship pursuant to 35 U.S.C. §256 begins to run before a patent issues when the omitted inventors knew or should have known that their names were omitted from the patent application.

    In particular, Chu contends that the Plaintiffs (Hor and Meng) can no longer file a §256 claim because the laches period began pre-patent issuance when the purported inventors knew or should have known of the potential inventorship dispute. Hor and Meng, meanwhile, argue that a §256 cause of action does not arise until the patent issues, and therefore the presumption of laches should not apply in this case since they filed suit within six years of issuance.

    The Court reverses the District Court and agrees with Hor and Meng that the period for laches for a §256 inventorship action cannot begin to run until the patent-in-question actually issues, even if the omitted inventors knew or should have known prior to patent issuance that their names were omitted. In particular, the court turned to the language of the statute, which provides (with emphasis), “Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent, the Director may... issue a certificate correcting such error.”