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There’s no “I” in team - Court adds co-inventors to patents

December 1, 2020
Year End 2020 IP Newsletter

Some types of inventions are the result of extensive collaboration, but not every collaborator qualifies as an inventor for patent purposes. The exclusion or inclusion of individuals as inventors can have significant implications, financially and otherwise. A recent case involving a cancer treatment sheds light on the concept of joint inventorship.

Dueling doctors

The six patents at issue each cover a method of treating cancer by administering antibodies. Dr. Honjo, a Nobel Prize winner, is listed as the inventor on each. In 2015, the Dana-Farber Cancer Institute filed a lawsuit to have two of its researchers, Drs. Freeman and Wood, added as inventors to the patents.

To qualify as a joint inventor, one must:

  1. Contribute in some significant manner to the conception or “reduction to practice” (that is, the actual development) of the invention,
  2. Make a contribution to the invention that isn’t insignificant in quality when measured against the full invention, and
  3. Do more than merely explain well-known concepts and/or the current state of the art to the real inventors.

Ono Pharmaceutical, the patent holder, appealed after the trial court found the doctors’ various contributions were sufficiently significant to the conception of the patents so as to make them joint inventors.

Collaboration and co-inventors

According to the U.S. Court of Appeals for the Federal Circuit, individuals may be joint inventors even though they don’t physically work on the invention together or at the same time, and even though each doesn’t make the same type or amount of contribution. Ono, however, argued that Freeman and Wood couldn’t be joint inventors because they didn’t participate in certain mice experiments that led directly to the conception of the treatments.

The court found that the relevant law makes it clear that joint inventors don’t need to contribute to all aspects of a conception. The researchers’ lack of participation in all of the experiments that led to the conception didn’t negate their overall contributions throughout their collaboration with Honjo.

The Federal Circuit also dismissed Ono’s claim that work from Honjo, Freeman and Wood’s collaboration was too speculative until the mice experiments were conducted. Conception is the touchstone of the joint inventorship question, the court explained, and conception is complete when an idea is sufficiently definite and permanent that someone skilled in the relevant field could understand the invention. Verification isn’t required.

In addition, Ono urged the court to adopt a new rule that research made public before the date of conception of a total invention can’t qualify as a significant contribution to conception of the total invention. The two researchers’ work with Dr. Honjo was published in a medical journal before conception of the patented inventions.

The court described the requested rule as “an unnecessarily heightened inventorship standard.” The rule, it said, would ignore the realities of collaboration, which generally spans a period of time and may involve multiple contributions.

The court found “no principled reason” to discount genuine contributions because parts of that work were published before conception for the benefit of the public. Earlier publication of an invention can jeopardize patentability, but publication of part of a complex invention doesn’t necessarily defeat joint inventorship of the invention — and, the court concluded, it didn’t here.

Joint effort

When multiple collaborators have been involved in an invention, working out the appropriate joint inventorship may prove challenging. The Federal Circuit’s opinion can provide some guidance into how to potentially avoid litigation regarding this issue.

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