Section 256 Inventorship Claim Does Not Accrue Until The Patent Issues

IP UPDATE: Edited by Paul Devinsky and Rita Weeks

Addressing challenges to inventorship under 35 U.S.C. § 256, the U.S. Court of Appeals for the Federal Circuit reversed a district court's grant of summary judgment that a claim for inventorship was barred by laches, finding that a claim for correction of inventorship does not accrue until the patent issues.  Hor v. Chu, Case No. 211-1540 (Fed. Cir., Nov. 14, 2012) (Prost, J.) (Reyna, J., concurring).

Defendant Ching-Wu Chu, a professor of physics at the University of Houston, and plaintiffs Pei-Herng Hor and Ruling Meng worked together at the University of Houston physics research lab.  During the mid-1980s, Chu filed two patent applications relating to superconducting compositions.  The two patent applications eventually issued in 2006 and 2010, respectively, with Chu named as the sole inventor.  In December 2008, Hor filed a complaint against Chu, asserting a claim for correction of inventorship under § 256 of