Inventorship: Limits of Collaboration

By Dennis Crouch

Rubin v. General Hospital Corp (Mass. General) (Fed. Cir. 2013)

Back in 2000, Dr. Rubin and his team identified an IKAP Gene mutation as causing a syndrome known as Familial Dysautonomia. Rubin sent his article to the American Journal of Human Genetics who forwarded the abstract to Dr. Gusella at Mass General for peer-review. Dr. Gusella then filed a provisional patent application in January 2001 shortly before Rubin’s article published. Gusella’s team had been working on the same genetic problem as Rubin (that’s why the journal sent him the article for review). Interestingly, Rubin particularly actually asked the journal not to send it to Gusella because of the lab-lab competition, but the journal sent it anyway.

After Gusella’s patent issued Rubin sued under 35 U.S.C. §256 – asking that Rubin be added as a joint-inventor. 35 U.S.C. §116 roughly defines joint inventorship as “when an invention is made by two or more persons jointly.” The statute makes clear that the two individuals do not need to “physically work together or at the same time,” “make the same type or amount of contribution,” or contribute to “every claim of the patent.” Still, the statute requires they acted “jointly.”

The district court dismissed the case on summary judgment – holding that there was no evidence of collaboration between Rubin & Gusella as required for joint infringement.

On appeal, the Federal Circuit affirmed – holding that “the independent relationship between these teams of scientists, and the nature of this communication of information, do not support joint invention in accordance with §116, or warrant change or substitution of inventorship under §256.” The non-precedential opinion by Judge Newman is short on analysis and does not contend with the controlling precedent of Kimberly-Clark Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911 (Fed. Cir. 1992). In that case, the court identified one form of joint inventorship “such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another’s suggestion at a meeting.” See also Mueller Brass v. Reading Industries, 352 F. Supp. at 1357 (E.D. Pa. 1972).

23 thoughts on “Inventorship: Limits of Collaboration

  1. Well, hvaing been a researcher before joning the profession I know there is a strong drive to prepare the publication befor a due date, yet the publication will be much later. A scientific publication is rarely sufficient for a patent application leading to grant though it can prevent inventive step.

    And note that it was stated that Interestingly, Rubin particularly actually asked the journal not to send it to Gusella because of the lab-lab competition, but the journal sent it anyway. Considering unethical behaviour is well known in the scientific community this was a serious and a strange lapse by the journal.

  2. my previous posts still effectively carry the day

    Your English fails you again, anon. Nobody hear can read your mind.

    Are you saying these claims are ineligible under 101 for the same reasons that Myriad’s composition claims are ineligible? Does that also apply to claim 4? Why or why not?

  3. LOL – again wanting answers when previous posts have been ignored to the points made.

    I will pass this time (as my previous posts still effectively carry the day).

    Thanks.

  4. Here, derivation may be applicable – but this is not always going to be so (add an intervening party, for example; or a party not willing to engage the patent system at all)

  5. Maybe the “experts” here can tell us whether one or both of these claims are ineligible under some “product of nature” theory, and why.

    C’mon, 6. anon? 101E? This should be easy for y’all.

  6. Not to mention that I don’t think examiners are empowered by law to execute searches, to seize evidence, or to make arrests.

  7. I’ll go home bro I don’t know about the rest of the folks. Although good luck getting an action in on an examiner that “refuses to follow procedure”. Who in the USPTO refuses to follow procedure? We pretty much always follow procedure. In fact, we have LIE’s and SPE’s that pretty much ensure procedure is followed in every action.

  8. Newman is wrong.

    While the two sets of inventors are claiming the same invention, the one group communicated the invention to the other group in the form of an abstract where the title of the abstract identified the critical aspects of the invention.

    On these facts, the this is not a 102(g) case, but a 102(f) case. If the first set showed that the second set learned of the invention from them, then the second inventors patent is invalid. It makes no difference at all that they were working on the same invention. If they had not yet identified the location of the mutation, they had not yet made the invention.

    Somehow, the most important issue in this case has be set to one side.

    102(f).

    Repealed by the AIA and replaced by derivation, of which this case is a very good example.

  9. lol, I’ve never met an attorney or examiner with more than ten years’ experience who genuinely believed in any of this.

  10. The words “accuse others of that which you do” come to mind (again).

    Some kind advice: You really should look into getting into a profession you can believe in. This bitterness you carry around with you makes you a rather unpleasant person.

  11. File first. As smart as they may be, researchers seem to be pretty bad at remembering those two words.

  12. Unless you want us all to quit, leaving hundreds of thousands of patent applications in permanent limbo, you’d better hope not.

  13. another ethics issue…

    These inventorship disputes are making patent applicants look like ordinary humans trying to seek fame and fortune with a minimum of honest work. Clearly the Federal Circuit needs to do something about this plague before the profession is tarnished.

  14. Assuming the facts outlined in the decisions are accurate, at the very least it seems that the inventors named on the patent should be subject to discipline/censure by both the journal and the university.

    Some of the broader claims in the issued patents:

    7,407,756

    1. A method for assaying for the presence of a mutation associated with Familial Dysautonomia in a human subject, said method comprising detecting the presence of a FD1 mutation wherein the thymine nucleotide at position 34,201 of SEQ ID NO: 1 is replaced by a cytosine nucleotide, or a FD2 mutation wherein the guanine nucleotide at position 33,714 of SEQ ID NO: 1 is replaced by a cytosine nucleotide in DNA or RNA from a biological sample from said human.

    That claim is certainly ineligible under Prometheus.

    7,388,093

    3. An isolated oligonucleotide probe consisting of at least 16 contiguous nucleotides of the portion of SEQ ID NO:1 from nucleotide 32,642 to nucleotide 36,846 which include position 34,201 of SEQ ID NO:1, or the complement thereof, said oligonucleotide probe being suitable for the detection of a FD1 mutation at position 34,201 of SEQ ID NO:1.

    4. The oligonucleotide probe of claim 3 which is 16 nucleotides.

    Maybe the “experts” here can tell us whether one or both of these claims are ineligible under some “product of nature” theory, and why.

  15. Anyone catch the case Millbrook v. U.S. from the Supreme Court of the United States that occurred last week. The Federal Tort Claims Act FTCA after decades of being narrowly construed by lower courts, SCOTUS unanimously stated that FTCA applies to all Federal Empolyees no matter what the circumstance so long as within the scope of their Federal employmnet in the context of an intentional tort being committed by said government employees. Before this ruling the FTCA applied to only during investigative and law enforcement activities. Could this now be used against patent examiners who refuse to follow procedure intentionally!!!! See Millbrook v. United States link to scotusblog.com

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