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United States Court of Appeals for the Fourth Circuit
April 7, 1971, Argued ; June 22, 1971, Decided
Nos. 15320, 15321
[***375] [*407] BUTZNER, Circuit Judge:
The principal issue raised in this interlocutory appeal is whether a district court may correct a patent by adding the name of a joint inventor when the named inventor, or his assignee, does not agree to the correction.
Sperry Rand Corp. sued Control Data Corp. for infringement of Patent No. 2,629,827. Iowa State University Research Foundation, Inc., moved to intervene so that its assignor, John V. Atanasoff, could be certified as a joint inventor along with the named inventors, John P. Eckert, Jr., and John Mauchly. Over the objections of Sperry Rand, the assignee of Eckert and Mauchly, and Control Data, the district court allowed Iowa State to intervene. However, it ruled that it lacked authority to correct the patent because Eckert, Mauchly, and Sperry Rand withheld consent. We believe the court correctly allowed intervention, but its order should be enlarged to permit Iowa State to seek a certificate naming Atanasoff as a joint inventor.
At this stage of the proceedings the issue presents only a question of law. For the purposes of these appeals, we assume that Atanasoff [**2] was a joint inventor whose name was omitted from the patent by error without deceptive intention on his part, and that neither he nor his assignees are barred from correcting the patent by laches, equitable estoppel, or any other defense. Of course, Atanasoff's entitlement may be questioned in subsequent proceedings. The appeals, therefore, require only interpretation of ] 35 U.S.C. § 256, which provides:
"Whenever a patent is issued on the application of persons as joint inventors and it appears that one of such persons was not in fact a joint inventor, and that he was included as a joint inventor by error and without any deceptive intention, the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate deleting the name of the erroneously joined person from the patent.
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444 F.2d 406 *; 1971 U.S. App. LEXIS 9384 **; 170 U.S.P.Q. (BNA) 374 ***
IOWA STATE UNIVERSITY RESEARCH FOUNDATION, INC., Appellant, v. SPERRY RAND CORPORATION and Control Data Corporation, Appellees. CONTROL DATA CORPORATION, Appellant, v. IOWA STATE UNIVERSITY RESEARCH FOUNDATION, INC., Appellee
patent, inventor, correction, parties, nonjoinder, proceedings, misjoinder, deceptive intention, district court, invalidate, assignee, joined, certificate, courts
Business & Corporate Compliance, Ownership, Conveyances, Assignor & Licensee Estoppel, Civil Procedure, Defenses, Demurrers & Objections, Affirmative Defenses, Laches, Patent Law, Originality, Correction of Inventorship Errors, General Overview, Joinder of Inventors, Joint & Sole Inventorship, Patents as Property, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Constitutional Law, Bill of Rights, Fundamental Rights, Eminent Domain & Takings, Parties, Joinder of Parties, Misjoinder, Procedural Due Process, Scope of Protection, Statutory Bars, Utility Patents, Product Patents