CoinventorshipOwnership

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Co-inventorship/Ownership

• Prof Merges
• 5/1/08

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Co-inventorship/Ownership

• In the first instance, the inventor is the owner
• Co-inventors are therefore, in the absence of any
  agreement, co-owners

3
Cases and principles

• Burroughs-Wellcome
• Stark
• Eli Lilly
• Ethicon

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Burroughs-Wellcome

• Standard for co-invention

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Burroughs standard

• 271(e) case
• Note timing why important?
• Feb, 1985 events
• NB license defense, p. 1257

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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

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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

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35 U.S.C. 262

• In 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.

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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

10
Stark v. Advanced Magnetics

• Interlocutory appeal
• Issue Standard for correction of inventorship

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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.

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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.

15
Stark

• Court earlier rejected estoppel theory put forth
  by AMI
• Put squarely question of interpreting section 256

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Stark

• Misjoinder wrongly added inventor
• Nonjoinder wrongly omitted inventor

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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.

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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.

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Holding

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

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Ethicon

• Co-inventorship ? co-ownership ? complete defense
  to infringement

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Claim 15
Not insubstantial contribution by Party D
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US Patent 000
Claim 15
Party Ds contribution to the patent
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US Patent 000
Inventors A,B, and C
Claim 15
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Tenancy in common
Patent 000
Inventor Ds contribution
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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?