Decision Clarifies Joint Inventorship Requirements

The recent decision of the United States Court of Appeals for the Federal Circuit in Vanderbilt University v. ICOS Corporation contains rulings regarding joint inventorship that should be of interest to all participants in sponsored research. First, the case reaffirms the rule that joint inventorship must be proven by clear and convincing evidence. No. 2009-1258, Slip Op. at 14-15 (Fed. Cir. April 7, 2010). It also holds – by a vote of two out of three judges – that Vanderbilt failed to carry that burden, id. at 19-20, and for that reason the case could be viewed as a hindrance to such claims. But the decision also emphasizes that determining joint inventorship is a fact specific inquiry, not easily subject to bright-line tests. This portion of the decision – which was unanimous – could ultimately support claims under the Patent Act to add joint inventors, assuming the existence of clear and convincing evidence that the co-inventors “collaborate[d] and work[ed] together to collectively have a definite and permanent idea of the complete invention.” Id. at 19.

The statutory requirements for joint inventorship are found in 35 U.S.C. §116, which codified the principles in Monsanto Co. v. Kamp, 269 F. Supp. 818, 824 (D.D.C. 1967) (stating that a joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts); see Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911, 916 (Fed. Cir. 1992) (stating that there must be some element of joint behavior, such as collaboration or working under common direction). Thus, a primary focus of joint inventorship has always been on collaboration and joint behavior. A person must contribute to the conception of the claimed invention to qualify as a joint inventor. Yet, each contributor need not have a contemporaneous picture of the final claimed invention in order to qualify as a joint inventor. Rather, the qualitative contribution of each collaborator is the key – each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.