{"id":1502,"date":"2017-04-13T00:00:42","date_gmt":"2017-04-13T04:00:42","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1502"},"modified":"2017-04-13T00:00:42","modified_gmt":"2017-04-13T04:00:42","slug":"an-omitted-inventor-cant-correct-inventorship-of-a-patent-owned-by-a-government-agency","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1502","title":{"rendered":"An Omitted Inventor Can’t Correct Inventorship of a Patent Owned by a Government Agency"},"content":{"rendered":"

In a non-precedential opinion in Ali v. Carnegie Institution of Washington, <\/em>[2016-2320] (April 12, 2017), the Federal Circuit affirmed the dismissal, on grounds of soverign immunity, \u00a0of Ali’s lawsuit to be added as a co-inventor on several of defendants’ patents. The\u00a0district of\u00a0Oregon court dismissed UMass on the ground\u00a0that it is entitled to sovereign immunity under the Eleventh\u00a0Amendment of the U.S. Constitution and\u00a0transferred the case to the U.S. District Court for the
\nDistrict of Columbia, where the court dismissed the case for want of an indispensible party.<\/p>\n

Ali argued that the Oregon court erred in\u00a0refusing to conclude that UMass waived sovereign immunity\u00a0when, in return for federal funding under the\u00a0Bayh-Dole Act. \u00a0The Federal Circuit noted that the question of Eleventh Amendment\u00a0waiver is a matter of Federal Circuit law, and that a district court\u2019s decision on sovereign\u00a0immunity is subject to de novo review. \u00a0The Federal Circuit said that UMass waives sovereign immunity under only two\u00a0circumstances: first, if the state on its own initiative\u00a0invokes the jurisdiction of the federal courts; and second,\u00a0upon a clear declaration by the state of its intent to submit\u00a0to federal jurisdiction. \u00a0The Federal Circuit said that\u00a0UMass\u2019s alleged agreement to be subject to suit\u00a0by the federal government under a contract controlled by\u00a0and consistent with the Bayh-Dole Act did not operate as\u00a0a \u201cclear declaration\u201d that it waived its sovereign immunity
\nas to Mr. Ali\u2019s suit against it for damages arising from\u00a0his alleged omission as a co-inventor of the patents-in-suit.<\/p>\n

The net result is that it is impossible for an omitted inventor to correct inventorship of a patent that is at least partially owned by a government entity.<\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In a non-precedential opinion in Ali v. Carnegie Institution of Washington, [2016-2320] (April 12, 2017), the Federal Circuit affirmed the dismissal, on grounds of soverign immunity, \u00a0of Ali’s lawsuit to be added as a co-inventor on several of defendants’ patents. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[29],"tags":[],"class_list":["post-1502","post","type-post","status-publish","format-standard","hentry","category-inventorship"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1502","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1502"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1502\/revisions"}],"predecessor-version":[{"id":1503,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1502\/revisions\/1503"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1502"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1502"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1502"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}