Co-inventorship/Ownership

Prof Merges

5/1/08

Co-inventorship/Ownership

• In the first instance, the inventor is the owner

• Co-inventors are therefore, in the absence of any agreement, co-owners

Cases and principles

• Burroughs-Wellcome;• Stark• Eli Lilly• Ethicon

Burroughs-Wellcome

• Standard for co-invention

Burroughs standard

• 271(e) case

• Note timing: why important?

– Feb, 1985 events

• NB: “license defense”, p. 1257

Burroughs-Wellcome

• “Coinventorship as a defense to infringement”

–License from (putative?) coinventor who has not otherwise assigned his/her interest can provide defense to infringement defendant

–Crucial: standard for determining coinventorship

Lilly v. Aradigm

• Lilly-Aradigm joint venture/research project

• Inventorship as “theft of invention” issue

• Standard:– Must contribute to conception of at least one claim– Not met here– “Clear and convincing” standard

35 U.S.C. 262

“[I]n the absence of any agreement to the contrary, each owner may make, use, offer to sell, or sell the patented invention within the Unites States, or import the patented invention into the United States without the consent of and without accounting to the other owners.”

Rights of Co-owners

• Each co-owner owns an undivided interest in the entire patent

– Not subdivided by claims

– Not related to “percentage contribution” of each inventor

– Ethicon situation, p. 1272

Stark v. Advanced Magnetics

• Interlocutory appeal

• Issue: Standard for correction of inventorship

§ 256. Correction of named inventor

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

§ 256. Correction of named inventor

The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

Stark

• Court earlier rejected estoppel theory put forth by AMI

• Put squarely question of interpreting section 256

Stark

• Misjoinder: wrongly added inventor

• Nonjoinder: wrongly omitted inventor

§ 256. Correction of named inventor

Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent [, -- ?] and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

Administrative remedy: section 116

Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application , and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

Holding

• Under 256, in misjoinder case, intent of inventors is irrelevant

• Under 256, in nonjoinder case, only intent of non-joined inventor is relevant

Ethicon

• Co-inventorship co-ownership complete defense to infringement

Claim 15

“Not insubstantial contribution” by Party D

US Patent # 000

Claim 15

Party D’s contribution to the patent

US Patent # 000

Claim 15

Inventors: A,B, and C

Tenancy in common

Inventor D’s contribution

Patent 000

Bootstrapping a complete defense

• One “not insubstantial contribution” to one claim leads to complete co-ownership interest in entire patent

• How to fix or prevent? Research before filing; reissue; 256 action; other?