Intellectual Property Law

Explanation of prior art element in dependent claim insufficient to confer inventor status

By McKee, Voorhees & Sease, P.L.C.

In a decision Thursday, the Federal Circuit reversed a summary judgment of dismissal for lack of standing by the District Court for the Eastern District of Michigan.  The district court held that one of the defendant's employees was a coinventor of the patent-in-suit, and because he had not joined as a plaintiff, the plaintiffs did not have standing to sue. 

The Federal Circuit reversed, holding the allegedly missing coinventor was not actually a coinventor.  Specifically, the only contribution made to the invention by this individual was limited to a single dependent claim, and the limitation added by that claim was a feature well-known in the art.  However, an inventor "may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent."  As such, the Federal Circuit held the alleged co-inventor's contribution to the invention was merely the "exercise of ordinary skill in the art," and therefore did not rise to the level of inventiveness.  As a result, the failure to join this individual as a plaintiff did not defeat standing.

More detail of Nartron Corp. v. Schukra U.S.A., Inc. after the jump.

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Full post as published by FileWrapper on March 09, 2009 (boomark / email).