Statute of Limitations Time-Bars Inventorship Claim

Wednesday, February 13, 2019

Patent assignments are tools for transferring ownership rights in patents, patent applications, and inventions from inventors to their employers, sponsors, or other “assignees.”  In Rubin v. United Therapeutics Corp., No. 1593, 2019 WL 290272 (Md. Ct. Spec. App. Jan. 4, 2019), an inventor, Dr. Rubin, filed a complaint seeking to have assignments he executed in favor of United Therapeutics Corp. (UTC) set aside on the grounds of constructive fraud, negligent misrepresentation, reformation of contract/mutual mistake, and breach of contract.  Dr. Rubin alleged that he was supposed to retain joint ownership in certain inventions with UTC, even though the assignments transferred all ownership rights to UTC.  Unfortunately for Dr. Rubin, he filed his complaint more than 3 years after executing the assignments.  Circuit Court Judge Beachley dismissed the complaint on the ground that the claims were time-barred under Maryland’s 3-year statute of limitations and the doctrine of laches.  Judge Beachley found that Dr. Rubin was on notice of his legal claims under the “signature doctrine” when he executed the assignments, more than three years prior to bringing suit.