Although the US case Ethicon Inc. v. U.S. Surgical Corp.
(135 F.3d 1456) is not a new decision, it's worth
reviewing since it neatly illustrates the troubles that can
arise. In Ethicon, a first inventor, Dr. Yoon,
obtained a patent covering a certain surgical device. The
patent contained 55 claims. Yoon granted a license to
Ethicon. On the stregth of this license, Ethicon turned around and
sued its competitor U.S. Surgical for infringing two of the claims
in the Yoon patent. U.S. Surgical in the course of preparing its
defence found that Mr. Choi had contributed to the invention and he
should have been named as co-inventor on the Yoon patent.
Mr. Choi contributed to only two of the 55 claims - two claims
which were not at issue in the infringement action. In its
defence, U.S. Surgical sought - and the court granted - an order
that Mr. Choi be added as a co-inventor to the patent. Even though
Mr. Choi had contributed to a small percentage of the overall
invention (and had contributed to claims that were not at issue in
the lawsuit), his status as a co-inventor permitted him under US
law to grant a license to the whole patent. Ethicon's patent
infringement lawsuit was dismissed after Choi granted
a retroactive patent license to U.S. Surgical.
Lessons for business?
Internal IP policies and invention-disclosure protocols should
be designed to capture all inventors who contributed to
In joint research agreements or joint development agreements,
don't ignore co-inventorship issues.
Remember that invention-disclosure and inventorship should
dovetail with invention assignment agreements, as well as the IP
provisions in employment agreements and consultant agreements.
Ensure you are getting legal advice regarding inventorship
as it relates to the jurisdiction in which you are filing your
Remember that the law in Canada and the US differs on this
point: A co-owner's interest in a co-owned patent can be
licensed without the consent of the other owner in the US and there
is no need to account to the other owner for licensing revenue; but
in Canada the patent cannot be licensed without the consent of the
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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