Inventorship: Student Denied Co-Inventorship Opportunity

GlaucomaStern v. Columbia University (Fed. Cir. 2006).

The district court found that Stern should not be added as a co-inventor on Columbia’s patent directed toward the use of prostaglandins to treat glaucoma.

Stern, a medical student at the time of the invention conducted a number of experiments for Lazlo Bito (the named inventor). Stern’s experiments showed that a single topical application of prostaglandin reduced intraocular pressure in monkeys and cats, but did not prove whether that would prevent glaucoma.  Bito later conducted further experiments and filed the application that led to the patent in question.

The district court found that the patent was directed at multiple doses of prostaglandin, and thus, that there was not any clear and convincing evidence that Stern had invented the invention as claimed.  On appeal, the CAFC reviewed the summary judgment decision de novo.

Based on Stern’s experiments and Bito’s prior publications, the appellate panel agreed that “Stern did not have an understanding of the claimed invention, did not discover that prostaglandins have an effect on IOP, did not discover that repetitive application of prostaglandins to the eyes of primates can maintain reduced IOP, and did not conceive of the idea of the use of prostaglandins to reduce IOP in primates. Furthermore, there was no collaboration between Stern and Bito in developing a glaucoma treatment. Stern simply carried out an experiment previously done by Bito on different animals—animals that Bito had already determined would be good models for prostaglandins research. Stern’s contribution is insufficient to support a claim of co-inventorship.”

The court went on to hold that “unwitnessed laboratory notebooks on their own” are insufficient to support a claim of co-inventorship. In this case, the notebooks had been allegedly destroyed by Professor Bito.


Read the case: [LINK]