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Scrivener Has No Claim of Inventorship of Patent

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By William Peacock, Esq. on March 31, 2014 3:57 PM

The facts of this case are not terribly exciting. Robert Allen had a payment system used in the automotive industry. With David Gillman's help, he filled out patent paperwork, giving Allen sole inventorship, for using the system to process health care claims. Other licensing agreements and ownership agreements gave Gillman some rights, though it seems most of those rights seemed were transferred to Allen's company, StoneEagle, in 2010.

In 2011, it turned out that the patent was valuable. Gillman got angry, the relationship soured, and StoneEagle sought a declaratory judgment that Allen was the sole inventor and owner of the patent. A defective injunction was issued, then "clarified" in 2013, yet Gillman tried to start a competing venture anyway.

Now, he's appealing the declaratory judgment and injunction.

Ownership, Inventorship, or Neither?

"On appeal, Appellants concede that Gillman is not an inventor of the '686 patent and argue, in pertinent part, that the district court lacked subject matter jurisdiction over the lawsuit because there was no actual controversy regarding StoneEagle's inventorship claim -- the sole claim in StoneEagle's original complaint arising under federal law."

Case closed.

On the patent application, Allen was listed as the sole inventor -- no dispute there. And as the court notes later in the opinion, ownership is a matter of state law, not federal law. Though this case was brought as a declaratory judgment action in federal court, there is no federal "case or controversy," because there is no inventorship dispute (inventorship is a federal question), nor any other independent federal ground for jurisdiction.

Scrivener's Rights?

Though Gillman conceded the inventorship question from the start, the court addressed the issue anyway, noting that even with all the facts and inferences taken in StoneEagle's favor, there isn't an inventorship question.

"Here, StoneEagle only alleges that Gillman "suddenly and falsely claimed that it is his patent, that he wrote the patent, that it is on his computer, and that he 'authored' or 'wrote' it, or words to that effect." [citation]. These allegations may give rise to a dispute concerning ownership, but they do not implicate inventorship."

In other words, any inventorship case Gillman might conceivably have due to his role as scrivener is so bad, that he wins (the jurisdictional dispute). The ownership dispute, and any other claims, will have to be fought over in state court.

The Federal Circuit also reminds us that "assistance in reducing an invention to practice generally does not contribute to inventorship ... Otherwise, patent attorneys and patent agents would be co-inventors on nearly every patent. Of course, this proposition cannot be correct."

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