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D. Md. L.R. 804.4

Cases Seeking Correction of Inventors (35 U.S.C. § 256)

activein force · 2025-12-01 – presentact-effective-date

Unless otherwise ordered by the Court, in all cases in which a party seeks an order

directing the Director of Patents to correct the inventors on a certificate of patent pursuant

to 35 U.S.C. § 256, the parties shall make the following disclosures.

a) Initial Disclosure of Contribution Contentions

Twenty-eight (28) days from the date of the Scheduling Order, any party seeking an

order directing the Director of Patents to correct a certificate of patent pursuant to 35

U.S.C. § 256 by adding to or replacing the inventors identified on the certificate shall serve

the opposing parties a claim chart identifying each claim in the patent(s) at issue in the case

to which the party alleges a person or persons, not named as inventor or joint inventor on

certificate(s) of patent, made a significant contribution in conception and/or reduction to

practice, describing the contribution made by the alleged inventor or joint inventor(s), and

identifying the date each such contribution was made.

b) Document Production Accompanying Initial Disclosure of Contribution

Contentions.

With the Initial Disclosure of Contribution Contentions, the party seeking correction of

a certificate of patent shall produce or make available for inspection and copying and

produce to opposing parties or make available for inspection and copying:

i. All documents upon which the party asserts its standing to bring the

claim(s) pursuant to 35 U.S.C. § 256; and

ii. All documents reflecting the alleged inventor or joint inventor(s)

contribution to the conception and/or reduction to practice of the

inventions described in the claims identified in the Initial Disclosure of

Contribution Contentions.

c) Documents Reflecting Conception and Reduction to Practice

Sixty (60) days from the date of the Scheduling Order, the opposing parties shall serve

upon the disclosing party all documents reflecting or pertaining to the conception and

reduction to practice of the inventions described in the claims identified in the Initial

Disclosure of Contribution Contentions.

Provenance

Source
www.mdd.uscourts.gov
Retrieved
2026-09-18
Edition
fed-district-2026-09-18
Content hash
6ba15e940581752dcf002466bf844648732c97c57aa63e3e95793b77a509e487
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