A. F. Stoddard & Co., Ltd. v. Dann

Decision Date26 August 1977
Docket NumberNo. 76-1777,76-1777
Citation564 F.2d 556,195 USPQ 97
Parties, 195 U.S.P.Q. 97 A. F. STODDARD & COMPANY, LTD., Appellant, v. C. Marshall DANN, Commissioner of Patents.
CourtU.S. Court of Appeals — District of Columbia Circuit

Thomas M. Gibson, New York City, with whom Joseph Y. Houghton, Washington, D. C., and John L. Welch, New York City, were on the brief, for appellant.

Jack E. Armore, Associate Sol., Washington, D. C., with whom Joseph F. Nakamura, Sol., Washington, D. C., was on the brief, for appellee.

Before WRIGHT and MacKINNON, Circuit Judges, and HOWARD T. MARKEY *, Chief Judge, United States Court of Customs and Patent Appeals.

Opinion for the Court filed by Chief Judge MARKEY.

MARKEY, Chief Judge, United States Court of Customs and Patent Appeals:

Appeal by A. F. Stoddard & Co., Ltd. ("Stoddard"), from the order of the District Court denying Stoddard's motion for summary judgment, granting the cross-motion for summary judgment of the Commissioner of Patents and Trademarks, and dismissing Stoddard's complaint filed under 35 U.S.C. § 145 (1970). 1 Stoddard is assignee of two patent applications, application Serial No. 220,454 2 (the "continuation application") and application Serial No. 355,695 3 (the "reissue application").

In this case of first impression, the sole question of law is: If, through innocent error, W was named as the inventor in a patent application and it is later discovered that H was the true inventor, can the error be corrected by diligent action upon its discovery? The District Court answered in the negative. We reverse and remand.

THE FACTS

The facts are undisputed and may be summarized as follows:

The actual inventor of the subject matter claimed 4 in the two applications is Jean J. Hospied, a Belgian citizen. Hospied was employed by Vernier Carpet at the time of the invention. He later served as Director of the Societe de Construction et de Recherches et d'Application (SOCORAP), a Belgian corporation. SOCORAP and Vernier Carpet had an agreement with Societe d'Etudes et Recherches et d'Exploitation d'Inventions Nouvelles Establishment (SEREINE) by which all inventions in the subject matter area by Hospied became the property of SEREINE.

A single patent application, which encompassed the subject matter of the two U.S. applications here in issue, was prepared by Maurice DeBrabanter, a Belgian patent agent, and was filed in Belgium on October 11, 1965, as Belgian application Serial No. 18,931. In accordance with Belgian law, Olaf F. Walser, the Director of SEREINE, executed the necessary application papers as representative of the owner, SEREINE.

On October 4, 1966, U.S. patent application Serial No. 584,249 (the "parent application") was filed in the U.S. Patent and Trademark Office ("PTO"), claiming the benefit of the filing date of Belgian application Serial No. 18,931 under 35 U.S.C. § 119. The place for signature of the inventor on the declaration for the parent U.S. application erroneously contained the signature of Walser on behalf of SEREINE. The error was made innocently and without deceptive intention.

The PTO determined that two separate inventions were present in the parent application, and a restriction requirement was made under 35 U.S.C. § 121. No additional declarations were required or made. The reissue and continuation applications here involved were derived from that single parent application.

On September 12, 1972, U.S. Patent No. 3,691,069 issued on one of the two U.S. applications. The other application, the continuation application, remained pending under examination in the PTO. Thereafter the error was discovered and Walser and Hospied were so advised by their U.S. patent attorneys. All parties having an interest in the issued patent and in the pending continuation application were diligent in their efforts to correct the error once it had been discovered.

On April 30, 1973, Stoddard filed the instant reissue application to correct the error in U.S. Patent No. 3,691,069. Hospied, the true inventor, executed the declaration for the reissue application. Also on April 30, 1973, Stoddard requested the PTO to amend the pending continuation application by correcting the original declaration to show Hospied as the actual inventor. A declaration of inventorship was signed by Hospied and filed with this request to replace the earlier declaration. In both instances, Stoddard explained in detail the nature of the error and the manner in which it arose.

The patent examiner finally rejected the continuation and reissue applications on the ground that the inventorship corrections requested could not be made under 35 U.S.C. § 116. 5 Therefore, the examiner rejected all of the claims in the continuation application under 35 U.S.C. § 102(f) 6 and all of the claims in the reissue application under 35 U.S.C. § 251. 7

THE BOARD

On appeal to the PTO Board of Appeals ("board"), the rejections were affirmed in separate 2-1 decisions.

With respect to the continuation application, the board majority stated in part:

On April 30, 1973, and May 15, 1973, papers seeking to change the named inventorship of this application from Olaf F. Walser to Jean J. Hospied were filed. These papers included declarations by Walser, Hospied, Maurice DeBrabanter (a Belgian patent agent), and Andre Vernier (Hospied's employer). The various declarations are to the effect that:

(1) Hospied, and not Walser, is the actual inventor of the subject matter of the here involved application, as well as of the parent applications;

(2) Walser is the Director of the company to which Hospied was obligated to assign his patent rights with respect to the involved subject matter;

(3) Walser mistakenly believed that he as Director of the company was the only person who could sign the United States application and he therefore executed the declaration accompanying Serial No. 584,249 in his capacity "as owner of the patent";

(4) Walser signed other applications for patent in countries other than the United States;

(5) Walser, Hospied and Vernier are not familiar with the patent laws of the United States;

(6) Walser does not speak English fluently.

The Examiner refused to convert the inventorship of the application from Walser to Hospied on the ground that 35 USC 116 does not authorize the deletion of the name of one sole inventor and the substitution therefor of the name of another sole inventor. The Examiner then rejected the claims under 35 USC 102(f) and thereafter this appeal was filed.

Except in certain specified instances, the United States patent laws require that an application for a patent be made by the inventor of the subject matter sought to be patented. See 35 USC 101, 111 and 115. The specified statutory exceptions to the requirement that the inventor apply for a patent are contained in 35 USC 116, second paragraph, 117 and 118. These last aforementioned sections are not here applicable. The patent laws (35 USC 116, third paragraph) additionally permit the amending of an application to correct the named inventorship to add the name of a joint inventor whose name was omitted or to delete the name of a person who was incorrectly named as a joint inventor. However, there is no provision in the law permitting the substitution of the name of one person for the name of another person who had incorrectly applied for the patent in his own name as sole inventor. Indeed, according to Mr. Federico's commentary * on the patent statutes, an application filed in the name of "A as inventor . . . cannot be amended to become the application of C as inventor . . . ." Mr. Federico's view on this subject appears to be shared by at least some members of the judiciary as is evident from the comments by the courts concerning section 256, which section parallels 116, in such cases as Rival Mfg. Co. v. Dazey Products Co., D.C., 358 F.Supp. 91, 177 USPQ 432, 439, and Garrett Corp. v. United States, 422 F.2d 874, 190 Ct.Cl. 858, 164 USPQ 521, 526. Each of the aforementioned cases cites Koehring Co. v. Etnyre and Co., D.C., 254 F.Supp. 334, 149 USPQ 263.

Although we have been unable to find any prior decision by the Board of Appeals or of any court involving the precise facts of this case, that is, amending an application of a sole named inventor to change the application to that of another sole inventor, we have reached the conclusion that such a change is not permitted or contemplated by the present patent laws.

Insofar as the dissenting opinion * * * is predicated upon the permissibility of correcting a defective oath, it appears to overlook the fundamental requirement of United States patent law that the application for a patent must be made by the inventor of the subject matter sought to be patented; 35 U.S.C. 111. This fundamental principle is well expressed by Robinson in his classic treatise "The Law of Patents for Useful Inventions," Volume I (1890), sections 362 and 363, at pages 521 to 523 * * *. We note that Robinson states "this principle (the true inventor must apply for a patent) is expressly formulated both in the Constitution and Acts of Congress." Thus, the filing of an application by one who is not the inventor of the subject matter is in effect a nullity. (Bracketed matter is in board's opinion.)

With respect to the reissue application, the board majority stated in part:

Although we may sympathize with the position in which the appellant now finds himself, we are constrained to agree with the conclusion reached by the Examiner. In our view, section 251, even if most liberally construed, does not authorize the reissuance of the Walser patent in the name of Hospied.

* * * (W)e are of the view that the United States patent laws do not permit an application filed in the name of one individual as sole inventor to be amended to substitute the name of another person as sole inventor. It would be inconsistent to permit a complete change in inventorship by...

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