The laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO.
Background / Facts: Two grad student / research assistants filed suit to have themselves added as inventors to Professor Chu’s patent, relating to superconducting compositions with transition temperatures higher than the boiling point of liquid nitrogen. Chu countered that the § 256 claims were barred by laches because the plaintiffs knew or should have known by as early as 1987 (25 years before the suit) that they were not named inventors on the patent applications.
Issue(s): Whether the laches period for a § 256 claim begins to run before a patent issues when the omitted inventors knew or should have known prior to patent issuance that their names were omitted from the patent application.
Holding(s): No. A § 256 claim for correction of inventorship does not accrue until the patent issues. “The reason is simple: that is what the language of the provision requires. § 256 (‘Whenever through an error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent …’) (emphases added).” Under well-established laches principles, “[a] cause of action cannot be barred by laches before it accrues; it is never extinct when it comes into existence.”