Federal courts of appeals are split over whether district courts have subject matter jurisdiction over inventorship disputes about patent applications. The Federal Circuit and Fifth and Sixth Circuits agree that the patent statute provides a private right of action for correcting the inventorship of issued patents but not of pending applications. The Federal Circuit and its regional sister courts disagree, however, about whether an inventorship dispute about a patent application satisfies 28 U.S.C. § 1338 under Christianson v. Colt Industries and its progeny. The dispute is nontrivial because, unlike a dismissal for failure to state a claim, a dismissal for lack of subject-matter jurisdiction permits a district court to remand an inventorship dispute to state court. And, because this is a jurisdictional dispute, Federal Circuit precedent is not controlling where it disagrees with its regional sister courts. After examining a case study about inventorship disputes and patent applications, this Note reviews law on inventorship disputes, the law on “arising under” jurisdiction, and the circuit split. It then analyzes that split, and, ultimately, it concludes that the Federal Circuit was essentially correct that inventorship disputes about patent applications arise under the patent statute, but should be dismissed for failure to state a claim upon which relief can be granted. This Note recommends that the Supreme Court should overrule the Fifth and Sixth Circuits and that courts should replace the evidentiary standard for inventorship disputes about patents—clear-and-convincing evidence—with a preponderance standard. Changing the evidentiary standard would comport with the America Invents Act’s revisions to inventorship correction and provide a safety valve for inventorship disputes over patent applications for which a diligent, good-faith plaintiff lacks a remedy and must wait until the USPTO issues the patent to obtain relief.
The full text of this Note is available to download as a PDF.