Joint Inventorship in Patents Can Present Problems

by Fenwick & West LLP
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Once an invention has been developed and a corresponding patent application is written, determining an inventorship list for the application might just seem like a formality to get the application filed. Particularly in cases where the application is owned or applied for by a company instead of the inventors, the inventorship may appear especially unimportant. However, an incorrect list of inventors could have a major effect on the ownership or validity of a patent.

An inventor is someone who contributes to the conception of at least one claim in a patent. Conception occurs when an inventor has consciously and completely developed the idea for the invention in his mind, so that no further inventive steps are needed to reduce the invention to practice. If conception sounds like it would be hard to prove, that's because it can be. This is why it is important to keep documentary evidence of conception, such as lab notebooks or invention disclosure forms. Such documentary evidence is particularly important now that the America Invents Act (AIA) is in place, which states that if two applicants are in dispute over who is the true inventor, one applicant can triumph if he can prove that the other applicant derived the invention from the first applicant's own work.

The inventorship rule is relatively clear when an invention was conceived by a solo inventor, but can become complex when more than one person is considered an inventor. In such cases, multiple inventors should be listed jointly on a patent. A joint inventor is an individual who has not only made a significant contribution to the conception of the invention, but also participated in a "collaboration or concerted effort" towards the invention. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359. This collaboration or concerted effort does not require that the joint inventors physically or concurrently worked together, but does dictate that the inventors "have some open line of communication during or in temporal proximity to their inventive efforts." Id.

The rules surrounding joint inventorship of a patent are not exactly intuitive. For example, if a patent contains 200 claims, and person X contributed to the conception of one claim while person Y contributed to the conception of the other 199 claims, both X and Y potentially have equal ownership rights in the patent. This means that both X and Y may be able to independently grant a license to the entire patent, even though X only conceived of one of the 200 claims. This concept played out in the U.S. Court of Appeals for the Federal Circuit case of Ethicon Inc. v. U.S. Surgical Corp., 135 F.3d 1456. Inventor In Bae Yoon granted a license to Ethicon for a patent covering a surgical device, and Ethicon sued U.S. Surgical for infringing two of the 55 claims of the patent. However, U.S. Surgical learned that Young Jae Choi should have been listed as a joint inventor on the patent. Even though Choi had only contributed to two claims (neither of which was a claim being asserted by Ethicon for infringement), the court granted a motion to correct the inventorship to include Choi. Choi then had the power to grant a license to U.S. Surgical, and the lawsuit was dismissed once the license was granted.

Another recent Federal Circuit case, Bard Peripheral Vascular v. W.L. Gore & Associates, 670 F.3d 1171, further clarifies what it means to be a joint inventor. The case revolved around the invention of prosthetic vascular grafts made from highly expanded polytetrafluoroethylene (ePTFE). Peter Cooper was an employee at Gore's facility, and made several ePTFE tubes. He sent these tubes to multiple researchers, telling them that the tubes could be potentially used as vascular grafts. Cooper then experimented on the tubes and discovered that ePTFE tubes with fibril lengths of 5- 100 microns were very effective for vascular grafts. David Goldfarb, a researcher who received ePTFE tubes from Cooper, independently determined that these fibril lengths
should be used for vascular grafts.

Goldfarb and Cooper filed separate patent applications on the ePTFE tubes, both with claims focusing on the fibril lengths of the tubes. Cooper's application was filed in April 1974, while Goldfarb's application was filed six months later in October 1974. The U.S. Patent and Trademark Office decided in an interference proceeding that Goldfarb was the first inventor to reduce the invention to practice, so the patent rights were awarded to Goldfarb (note that in today's AIA-mandated first-to-file world, Cooper would likely have won instead, since he was the first to file his patent application). Goldfarb's patent had been assigned to the company Bard Peripheral Vascular, which then sued Gore for patent infringement.

Gore's defense was that Cooper should be a joint inventor. Cooper did, after all, send the tubes to Goldfarb and tell him they could be used as vascular grafts. However, a person is not a joint inventor just because he explains to an actual inventor a concept that is well known - the concept of using ePTFE tubes as vascular grafts was not new at the time. Furthermore, Goldfarb discovered the importance of the tube fibril length on his own. Cooper had sent Goldfarb tubes of varying fibril lengths, but there is no evidence that he thought the lengths were important at all. The Federal Circuit held that a joint inventor must appreciate what he has invented, and must have collaborated with other inventors to contribute significantly to conception and reduction to practice of the invention. Bard won the lawsuit, and Gore was left facing over $1 billion in damages for patent infringement.

Clearly, a goal of any company should be to avoid inventorship disputes that could end up costing over $1 billion. In addition to requiring that inventor employees assign patent rights to their employer, any business interested in protecting its intellectual property should also be diligent about determining true inventorship, as well as entering into written agreements regarding ownership rights for intellectual property that comes about during any collaboration with outside inventors or companies. Agreements should also be in place requiring all collaborators to disclose to each other any discovery that occurs from the collaboration. Preemptively requiring such agreements to be signed can prevent miscommunications and misunderstandings that turn into expensive and high-profile lawsuits down the road.

Originally published in the Daily Journal on March 7, 2014

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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