 |
* COINVENTORS MUST BE PROVIDED NOTICE AND OPPORTUNITY FOR HEARING UNDER SECTION 256(B)
Fortress Iron, LP v. Digger Specialties, Inc., 24, 2313 — On Thursday in an opinion by Judge LOURIE, the Federal Circuit affirmed a district court summary judgment that Fortress’s patents for cable railings were invalid for omitting Huang as a coinventor. Both parties agreed Huang was a coinventor, making him a “party concerned” under 35 U.S.C. § 256(b) entitled to notice and opportunity for hearing prior to correction of inventorship, notwithstanding his lack of ownership rights or Fortress’s inability to contact him. That Huang would not be adversely affected by the correction, or that he lacked constitutional standing to seek coinventor status, did not alter that conclusion. Fortress further argued that § 256 should be construed broadly as a “savings provision” to preserve patent validity rather than invalidate patents on technical grounds. The Federal Circuit disagreed, holding that § 256 is a “savings provision” “only to the extent that its statutory requirements are met” and did not apply without Fortress meeting the notice and hearing prerequisites.
(1 to 4 stars rate impact of opinion on patent & trademark law)
USPTO ANNOUNCES PRE-ORDER PROCEDURE FOR SUBSTANTIAL NEW QUESTION DETERMINATIONS IN EX PARTE REEXAMINATION
Last week the USPTO announced a new procedure allowing patent owners to submit information before the agency determines whether to order an ex parte reexamination based on a substantial new question (SNQ) of patentability. Under the new process, a patent owner may explain why a teaching relied upon in a request for reexamination would not be considered important to a reasonable examiner in deciding whether a claim is patentable to assist examiners in determining whether the request raises an SNQ, the statutory threshold for ordering ex parte reexamination. The procedure is intended to help the Office address a recent increase in ex parte reexamination requests.
THANK YOU IPOEF DONORS
Thank you to the generous donors who have supported IPOEF to kick off 2026! Contributions help IPOEF scale our resources and introduce a larger audience of students, educators, entrepreneurs, and innovators to the value of IP. With the support of our donors, in 2025, we brought IP directly into classrooms, built tools that make learning approachable, and continued changing the public narrative to show that IP is everywhere. Help us keep the momentum in 2026 and donate today. Visit IPOEF.org to learn more about our resources and programs.
 |