Missing person found too late to save patent from invalidity.

Section 256 of the Patent Act lets a patent owner correct who is named as an inventor. The Federal Circuit calls Section 256 a savings provision, but the savings can only occur when a missing inventor can be reached in time. In Fortress Iron v. Digger Specialties, Fortress conceded that two engineers at a Chinese supplier were coinventors. Fortress located one engineer and added him. The second engineer had left the supplier without leaving contact information. An agreed-upon omitted coinventor is a “party concerned” entitled to notice and a hearing before a court orders correction under Section 256. Correction became impossible, and both patents fell.

Fortress located the missing engineer after the opinion issued and obtained his signature. Judgment had already entered, and a later certificate of correction does not undo the judgment. Rehearing was denied in June, and certiorari is pending.

Inventorship Evidentiary Gaps in AI Workflows

Paul Atamewan’s analysis in IPWatchdog, Inc connects the Fortress Iron holding with the evidentiary gap AI workflows open. Conception requires fixation in a human mind of a particular solution to the problem at hand, rather than a general research goal, corroborated contemporaneously. A prompt describing a problem states a goal. Model output shows what the system produced. Where a human contribution was selecting among generated candidates, evidence of inventorship can be found in the discarded alternatives. AI-assisted development widens the pool of contributors who go unnamed: outside engineers, vendors and contractors who signed no assignment and left no forwarding address.

Practice Points

  • Each coinventor presumptively owns an undivided interest in the whole patent, and an infringement suit proceeds only if every owner joins. In Ethicon v. U.S. Surgical the accused infringer found the omitted coinventor mid-case, took a license, then moved to add the coinventor. The suit was dismissed.
  • The cheaper fix expires at issuance. A pending application can add an unreachable inventor on a substitute statement the applicant signs. After issuance, correction requires reaching the missing inventor.
  • Conception documentation should be dated and indicate each person’s involvement, solutions to technical problems, how any AI tools were used, and what human inputs were involved. Notes on deliberations, unpursued alternatives, and potential inventors’ contact details should be retained.

The USPTO’s revised guidance from last November drops the joint-inventorship factors where one human invents with AI assistance, focusing on traditional definitions of conception. Exposure remains where inventive contributions of humans in the workflow go unrecorded.

Sources

  1. Fortress Iron, LP v. Digger Specialties, Inc., 171 F.4th 1310 (Fed. Cir. Apr. 2, 2026): https://www.cafc.uscourts.gov/opinions-orders/24-2313.OPINION.4-2-2026_2670424.pdf
  2. Rehearing denied June 5, 2026. Certiorari petition filed Sept. 3, 2026, No. 26-362; at 4 n.2 the coinventor was located and signed after the opinion, certificate of correction pending: https://www.supremecourt.gov/DocketPDF/26/26-362/423966/20260911155009435_26-%20Petition.pdf
  3. Paul Atamewan, Correcting the Uncorrectable: AI-Assisted Inventorship and Section 256, IPWatchdog (Sept. 8, 2026): https://ipwatchdog.com/2026/09/08/correcting-uncorrectable-ai-assisted-inventorship-section-256/
  4. Revised Inventorship Guidance for AI-Assisted Inventions, 90 Fed. Reg. 54636 (Nov. 28, 2025): https://www.federalregister.gov/documents/2025/11/28/2025-21457/revised-inventorship-guidance-for-ai-assisted-inventions
  5. 35 U.S.C. 100(f), 115(d)(2)(A)(iii), 115(f), 256; 37 C.F.R. 1.48(b), 1.64(a), 1.324(b)(1). Chou v. Univ. of Chicago, 254 F.3d 1347 (Fed. Cir. 2001). Pannu v. Iolab Corp., 155 F.3d 1344, 1349 (Fed. Cir. 1998). Ethicon v. U.S. Surgical Corp., 135 F.3d 1456, 1465, 1467-68 (Fed. Cir. 1998). Burroughs Wellcome v. Barr Labs., 40 F.3d 1223, 1228 (Fed. Cir. 1994).