Federal Circuit: An Author is not an Inventor

This week, I recently read a new article that discusses the nuances of patent ownership. It is interesting since there is a distinction between authorship and inventorship. Here, I will be looking at this issue through the case of the StoneEagle company.

The situation was that there were two men, Gillman and Allen, who worked on the collaboration and wrote up patent No. 7,2792,686. Gillman was not on the document officially but later claimed that he possessed the original documents. However, he did not win in court due to the dispute that the Federal Court found on the jurisdiction to rule on this case. The StoneEagle company was able to retain control of the patent that was filed under Allen's name.

The important issue here is determining the extent of the legal jurisdiction. The court decided that there was controversy between Gillman and StoneEagle company but the ownership dispute was related to a local law. As such, the dispute remained in the realm of local laws and processed by local courts. Since Gillman helped write the draft, he was considered a drafter and not necessarily an inventor. I do agree with the article that it would have been more helpful to prove Gillman was an inventor rather than writer for the patent.

Another interesting point was the case was conducted in Texas. Given the significance of location, the case may favor the individual pursuing the disputed patent. However, Gillman did not win the case and could not concretely prove he was part of the inventing process. Allen's name is only shown on the patent which the USPTO had allowed.

Gillman could have made alternative strategies if he was unable to acquire the patent. It would have been possible for Gillman to prove that the patent is invalid and should be revoked. In this case, StoneEagle would not be able to benefit from the patent. Looking at other patents, there is another healthcare payment system patent filed earlier by Lieberman which could have been used to show that StoneEagle did not make something novel.

Also, the Gillman legal group could consider disputing the patent on grounds of obviousness. This tactic could greatly weaken the validity of the patent. If a skilled expert in payment systems would be able to look at an earlier patent and show that it would have been obvious to implement StoneEagle's system, then the patent would have been invalidated and Gillman would have at least prevented others to benefit from it.

http://patentlyo.com/patent/2014/03/inventor-authorship-inventorship.html
http://patft.uspto.gov/netacgi/nph-Parser?Sect2=PTO1&Sect2=HITOFF&p=1&u=/netahtml/PTO/search-bool.html&r=1&f=G&l=50&d=PALL&RefSrch=yes&Query=PN/7792686
https://docs.google.com/viewer?url=patentimages.storage.googleapis.com/pdfs/US20070050205.pdf