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ARTICLE · 12 OCTOBER 2026

Federal Circuit Affirms Patent Invalidity Where Inventorship Error Cannot Be Corrected Under 35 U.S.C. §256

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The Federal Circuit has ruled that patents cannot be saved when an undisputed joint inventor is omitted and cannot be added due to inability to provide required notice. This case of first impression establishes that omitted coinventors are "parties concerned" under 35 U.S.C. § 256(b), entitled to notice regardless of economic interest, and that failure to satisfy this statutory requirement results in patent invalidity even when all parties agree on inventorship.

United StatesIntellectual Property
Nathan Zwartz
Nathan Zwartz
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On April 2, 2026, the U.S. Court of Appeals for the Federal Circuit affirmed summary judgment invalidating two patents based on improper inventorship. The decision arose from Fortress Iron, LP v. Digger Specialties, Inc., No. 2024-2313 (Fed. Cir. Apr. 2, 2026). In a case of first impression, the Court addressed whether an omitted coinventor is a “party concerned” under §?256(b). The Court held that omission of an undisputed joint inventor rendered the patents invalid where correction under the statute was not possible.

The patents involved, U.S. Patent Nos. 9,790,707 (“the ‘707 patent”) and 10,883,290 (“the ‘290 patent”), each assigned to Fortress Iron, LP (“Fortress”), are directed to pre-assembled vertical cable railing panels. Fortress developed the products through a collaborative process involving internal personnel as well as overseas manufacturing and quality-control partners. After Fortress’s initial concept and design work, employees of a third-party partner proposed

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