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ARTICLE · 09 SEPTEMBER 2020

AIA Change Allows For Deceptive Patent Correction Practices

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With the AIA, Congress amended § 256 to remove the requirement that the "error" of omitting an inventor from a patent must occur without "deceptive intention."

United StatesIntellectual Property
Scott A. McKeown
Scott A. McKeown
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Amendment of § 256 Removed Previous Prohibition on Deceptive Intent

With the AIA, Congress amended § 256 to remove the requirement that the "error" of omitting an inventor from a patent must occur without "deceptive intention." That is not to say that such a deceptive intention would be free from an inequitable conduct charge, but, at least for purposes of the administrative correction, intent is no longer a consideration of the agency.

Few cases have explored the impact of this amendment, until Egenera, Inc. v. Cisco Systems, Inc, which held the correction -and unraveling of the same correction -is not prevented by the amended statute.

As a reminder, the revised statute now reads:

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