By Dennis Crouch
In re Hubbell (Fed. Cir. 2013)
Hubbell is the third element of a trio of recent decisions that remind-us that conception and inventorship will remain critically important even after the US patent system fully-shifts to the first-to-file regime. See Dawson v. Dawson and Rubin v. General Hospital Corp. In thinking about these cases, innovative companies may want to consider their employment agreements and their rights to patents associated with post-employment developments.
US Patent law has always recognized inventors as the original patent owners. Conception of the invention imbues the inventor with an inchoate patent right that can then be fully realized by successfully completing the patenting process. As Judge Reyna writes “Inventorship is perhaps the most fundamental question in patent law. The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude.” (Judge Reyna in Dawson writing in dissent). Ownership of that inchoate right is usually transferred to the inventor’s employer as required by the individual employment contract. Without such a contract, the inventor retains ownership rights. Although the America Invents Act shifts some weight away from the primacy-of-invention, it does nothing to change this fundamental precept that rights are created at conception and held by the inventor until transferred.
As was the case in Dawson, Hubbell involves a situation where the inventor moved from one employer (Caltech) to another (ETH Zürich). His first-filed patent application (as a joint-inventor) is owned by Caltech and the second-filed application (as a joint-inventor with different joint inventors) is owned by ETH Zürich. It turns out that ETH Zürich did a better job of getting a patent and that patent issued in 2002. The Caltech patent application is still pending and is the subject of this appeal.
Of the two applications, the Caltech application was both the first invented and first filed. That means that the later ETH Zürich cannot serve as prior art. However, the PTO rejected the Caltech application under the doctrine of obviousness-type double patenting. The doctrine of obviousness-type double patenting is not statutory but instead a judicially created equitable doctrine Normally, this type of rejection is not fatal because the patentee can file a paper known as a terminal disclaimer that both (1) disclaims any term of enforcement that extends beyond the other patent and (2) agrees to that both patents will be co-owned throughout their lifespan. The problem here is that the patents are not co-owned and Caltech cannot make that promise.
Caltech argued that the double patenting rejection should not apply because the two applications have different owners and different inventors. As an alternative, the university argued that the equitable solution is to allow it to file the terminal disclaimer without the co-ownership promise.
On appeal, however, the Federal Circuit affirmed the PTO’s decision – holding that obviousness type double patenting applies and that Caltech cannot receive its patent without linking ownership. Writing for the 2-1 majority, Judge O’Malley highlighted multiple-suit harassment problem that served as the originating policy concerns for the limiting doctrine – writing that “the MPEP standard is consistent with the rationale we have used to support application of obviousness-type double patenting rejections.”
Judge Newman dissented – arguing that obviousness type double patenting is not available when a patent has different owners, different inventorship, and no joint development agreement. And here, Newman argues, that we have different inventorship because the lists of joint inventors are not identical.
The court today not only finds “double patenting” when there is neither common inventorship nor common ownership, but having so found withholds the standard remedy of the terminal disclaimer, and simply denies the application. This novel ruling is contrary to statute and precedent, with no policy justification for changing the law.
Under Judge Newman’s theory the patent should issue on its merits or perhaps be subject to an interference or derivation proceeding.
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The panel notes that the reason Caltech’s application took so because the university was playing games with continuation practice and claims that are almost identical to those at issue now were allowed back in 2003. Instead of taking that patent, Caltech filed a continuation and abandoned that allowed application.
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We do have a (slightly) open question moving forward as to whether obviousness type double patenting remains as a viable doctrine following the AIA.