The U.S. Court of Appeals for the Federal Circuit recently
considered what activities rise to a contribution to conception
that qualify one to be a joint inventor of a chemical compound in
its opinion Falana v. Kent State Univ., No. 2011-1198
(Fed. Cir. Jan. 23, 2012). The general law of inventorship is as
follows. The inventors listed on a patent include all individuals
who made an inventive contribution to at least one claim. That is,
inventorship is determined on a claim-by-claim basis. A person who
conceived the complete subject matter of any claim, including all
claimed features, has made an inventive contribution. The mental
act of conception is essential to inventorship. A person may devote
long hours to a project, and his or her efforts may be important to
its commercial success, but if these efforts do not include the
conception of claimed subject matter, the person is not an
inventor. For example, reducing to practice or carrying out the
idea of another does not qualify one to be an inventor. A person
who provides general technical information without contributing to
conception is not an inventor. The collaboration of multiple
individuals can complicate the determination of inventorship. There
must be at least one-way communication of information relevant to
conception between two people for them to be considered joint
inventors - individuals who independently conceive an idea cannot
be joint inventors.
The facts in Falana are important to understanding the
Federal Circuit's holding. As a post-doctoral researcher at
Kent State, plaintiff Dr. Olusegun Falana developed a synthesis
protocol for making a novel class of naphthyl-substituted TADDOL
(tetraaryl-1,3-dioxolan-4,5-dimethanol) compounds of use in LCDs
(liquid crystal displays). Among the compounds synthesized by
Falana was Compound 7, which exhibited temperature independence
over a range of -20 to +30 °C of the important high helical
twisting power property. This range of temperature independence
represented significant progress, but was not sufficiently broad to
meet the project goals. Falana subsequently resigned from the
research group. Another member of the group, Dr. Alexander Seed,
then used Falana's synthesis protocol to synthesize a Compound
9 that exhibited temperature independence over a range -20 to +70
°C, meeting the goals of the project. An application was filed,
later issuing as U.S. Patent Number 6,830,789 (the "'789
Patent"), which listed Seed and others, but not Falana, as
inventors. The application included a generic claim 1 to a
naphthyl-substituted TADDOL. A "generic claim" to a
chemical compound encompasses multiple individual compounds, for
example, by allowing for the moiety substituted at a position on a
molecule to be selected from a list of differing chemical groups.
Generic claim 1 did not expressly include a requirement for a
temperature independence range of high helical twisting power.
Falana then filed the present case in the U.S. District Court of
the Northern District of Ohio to be added as an inventor to the
'789 Patent. The District Court found for Falana, ruling that
he contributed to the conception of the claimed invention and was
to be added as an inventor. The defendants, Kent State and Seed,
then appealed to the Federal Circuit.
In their appeal, the defendants argued that the claims should have
been construed to be limited to a compound "having a
substantially temperature independent high helical twisting
power," even though this limitation was not expressly recited
in the claims, because the specification so described the inventive
compounds, and, without such a limitation, the claimed compounds
would be commercially worthless. The Federal Circuit disagreed,
finding no suggestion in the intrinsic record that the applicant
intended to so limit the claims. Therefore, the plain language of
the claims governed. The Federal Circuit affirmed the construction
of the District Court, in which the claims were not limited to a
compound "having a substantially temperature independent high
helical twisting power."
The defendants further argued that even if Falana had contributed
to the synthesis protocol, he was not a joint inventor, because the
claims were all directed to compounds and not methods, invoking the
decision in Bd. of Trs. of Fla. State v. Am. Biosci., 333
F.3d 1330, 67 USPQ2d 1252 (Fed. Cir. 2003). The Federal Circuit
distinguished Am. Biosci. on the facts, because the method
of the putative co-inventor in that case was not used to make any
of the compounds claimed in the patent at issue. By contrast, in
the present case, the method used to make the genus of compounds
claimed in the '789 Patent was Falana's synthetic protocol.
The Federal Circuit agreed with the conclusion of the District
Court that Falana's contribution to developing the synthetic
protocol was greater than the exercise of ordinary skill in the
art.
In Falana, the Federal Circuit held that an individual has
contributed to the conception of a genus of chemical compounds and
is an inventor of the genus when he or she (i) envisioned the
structure of a novel genus and (ii) contributed the method, not
already within the scope of public knowledge, of making that genus.
On the basis of this conception test, the Federal Circuit affirmed
that Falana was an inventor of the '789 Patent.
From a practical perspective, Falana highlights the need
to address inventorship and the distinct, but related, issue of
ownership throughout the entire innovation cycle. At the beginning
of employment, individuals should sign an employee agreement that
conveys intellectual property developed within the scope of
employment to the employer. When two or more companies collaborate
on a project, an advance agreement should set forth the allocation
of ownership of intellectual property developed. Researchers should
be educated about the standards of inventorship and the
implications of acknowledging the putative contributions of third
parties. They should be encouraged to consult with patent counsel
throughout the course of a project. Such communication can help in
avoiding missteps and tempering individual expectations. The
undesirable situation of having to resolve a dispute or even
compete with a disgruntled individual who considers him or herself
an incorrectly excluded inventor can be avoided through the early
implementation of procedures to assess inventorship before
patentable subject matter is perceived as being of substantial
value.
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