AIA reforms limit suits—ability to correct, hurdles to file suits, HITL sufficient

The Leahy-Smith America Invents Act of 2011 (AIA) included several statutory amendments that facilitate corporate patenting while still retaining the notion of human inventorship. The most direct of these is elimination of inventorship as a condition of patentability. Prior to 2011, U.S. law stated clearly that a patent could be invalidated based upon the fact that a non-inventor was listed as the inventor.61 That provision was eliminated by the AIA. In parallel, the new law also eliminated the date of invention as relevant to patentability. Thus, the new law provides a shift from a first-to-invent system to a first-to-file system.62 Coupled with these changes are new regulatory provisions that allow corporate employers to directly seek patent protection. Previously, applications were filed on behalf of the inventors themselves except in rare circumstances.

The revised law continues to provide some tools to ensure that the listed inventors are the true inventors, but those tools are quite limited. For instance, the new law includes a limited 1-year grace period for the true inventor to file for patent protection in situations where someone else falsely claimed inventorship. 63 Alternatively, procedures also narrowly provide for a derivation proceeding, but again with a tight deadline of 1-year following either publication or patenting.64 But derivation can only be found if the allegedly derived invention is “the same or substantially the same invention,” and so excludes a situation where a “derived invention” serves as the base but then new elements are added to the invention. And, if an inventorship listing error is found, the revised law allows for correction of inventorship even if the original listing constituted fraud.65 And, under the new statute, a patent remains valid if inventorship can be corrected.66

While an inventor who is not listed as an inventor can sue for correction, the inventor must show some associated concrete harm in order to have standing to sue in Federal Court. 67 Even though guaranteed by statute, the right to be named an inventor on its own is not enough to satisfy the Constitutional case-or-controversy requirements. 68 And, in order to raise an inventorship challenge, there must be some additional identifiable human who is the inventor. Thus, a recent antitrust case involving a Hot-Pocket packaging patents rejected the patent challenger’s claim of improper inventorship because no particular ‘proper’ inventor was identified.69

None of these formalities shift the general rule requiring the correct human inventors to be identified. However, the myriad hurdles operate collectively ease the path for corporate owners to now see human inventorship listing as a paper tiger without genuine teeth so long as no human outside the company bounds can stake an inventorship claim. One example might be a situation where a corporate applicant lists two of its employees as inventors, but fails to list a third who contributed to the invention. That listing could always be corrected by the owner, but even if not corrected the third inventor would not likely have standing to sue if also subject to an obligation to assign invention rights to the employer.70

These procedural hurdles for challenging inventorship listings become even more important in the context of potentially significant inventive contributions made by AI or other non-human aspects of the corporation. Although those non-human contributions do not count directly as corporate invention, a company may name the humans most closely related to the innovation as the inventors—feeding the paper tiger while retaining full ownership rights. This outcome helps explain why machine-assisted invention does not change inventorship.