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District Courts Cannot Compel PTO to Change Order of Inventors

September 17, 2001

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Last Month at the Federal Circuit - October 2001

Judges: Schall (author), Bryson, and Dyk

In Fina Technology, Inc. v. Ewen, No. 00-1578 (Fed. Cir. Sept. 17, 2001), the Federal Circuit vacated an order by the district court ordering the Director of the PTO to change the order of inventors on two patents.

Fina Technology, Inc. and Fina Oil and Chemical Company (collectively “Fina”) are owners of U.S. Patent Nos. 4,892,851 (“the ‘851 patent”) and 5,476,914 (“the ‘914 patent”) directed to a certain type of polypropylene technology. Both patents list Dr. John A. Ewen as the first inventor and Dr. Abbas Razavi as the second inventor.

In December 1993, Fina brought a DJ action against Dr. Ewen in the United States District Court for the Northern District of Texas seeking judgment that the inventorship designation of the ‘851 patent was correct. Subsequently, Dr. Razavi intervened. When the ‘914 patent issued in 1995, Fina added it to its suit. Eventually, the parties entered into a settlement agreement (“the Agreement”) and, thereafter, the district court dismissed Fina’s suit with prejudice and ordered the Director of the PTO to issue a certificate of correction pursuant to 35 U.S.C. § 256 for the ‘851 and ‘914 patents reversing the order of inventors.

Dr. Ewen appealed the order of the district court, arguing that the Agreement contemplated only dismissal of the lawsuit with prejudice and that the district court did not have authority under 35 U.S.C. § 256 to change the order of inventors of the patent.

The Federal Circuit ruled that the language of § 256 was not broad enough to be read as giving the district court authority to order the Director to change the order of the inventors on an issued patent.

Further, § 255 permits the Director only to issue a certificate of correction for clerical errors and cannot be applied in a judicial proceeding. Citing to the MPEP, the Court noted that the Director only has authority to change the order of inventors when a petition is granted under 37 C.F.R. § 1.182.