Joint Inventorship: Court Maintains Low Standard for Joint Inventorship

by Dennis Crouch

In an interesting inventorship dispute, the Federal Circuit has affirmed a lower court ruling that two scientists should be added to the list of inventors on a set of patents obtained by Ono Pharmaceuticals. The change in inventorship means a change in ownership rights as well, and these are valuable patents.

Dana-Farber Cancer Institute, Inc. v. Ono Pharma Co. (Fed. Cir. 2020).

Ono holds a number of tied to cancer therapies that disrupt PD-1 receptor/ligand activity on certain cancer cells.  That disruption then allows a stronger immune response by the patient’s body. US7595048; US8168179; US8728474; US9067999; US9073994; and US9402899.

In the 1990’s Dr. Tasuku Honjo discovered the PD-1 receptor, isolated its DNA sequence, and studied various aspects of its relationship to “programmed cell death.” He was awarded the Nobel Prize for this research. Honjo then started a quest to find a ligand binding to PD-1.

At some point, Honjo began collaborating with Drs. Freeman and Wood who were working in the US.  The trio shared substantial data and plans back-and-forth and began a collaborative research project.

Then what happened — Freeman and Wood filed a patent application on a response-modulation therapy but did not include Honjo on the application (even after he asked to be included). Honjo then filed his own patent application in Japan — the parent application for all of the patents at issue here. Although years later, Dana-Farber eventually sued for correction of inventorship under 35 U.S.C. § 256(b) — a move that would give it partial ownership over the patents.

Invention is generally thought to have two key points of demarcation: (1) conception of the invention; (2) reduction of the invention to practice.  That said, the primary focus is usually on the first point – conception.  Joint inventorship creates some confusion on this point – but the basic requirement is that each joint inventor must significantly contribute to the conception or reduction to practice. On this point, the Judge Lourie quotes one of his own opinions from 1998:

All that is required of a joint inventor is that he or she (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Quoting Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998). Regarding conception, the court also notes that “conception” may be somewhat speculative:

[C]onception is complete when an idea is definite and permanent enough that one of skill in the art could understand the invention. An inventor need not know, however, that an invention will work for its intended purpose in order for conception to be complete, as verification that an invention actually works
is part of its reduction to practice.

Slip Op. citing Burroughs Wellcome Co. v. Barr Laboratories, Inc., 40 F.3d 1223 (Fed. Cir. 1994).

Some of the information provided by Freeman and Wood had already been made public by the time of the “complete invention.”  The Federal Circuit, however refused to “hold categorically that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention.”

[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.

Id.  In the end, the court concluded that Ono’s arguments were essentially a request to “adopt an unnecessarily heightened inventorship standard.” The court declined.

18 thoughts on “Joint Inventorship: Court Maintains Low Standard for Joint Inventorship

  1. 5

    Isn’t a co-inventor required to contribute at least one surviving claim to the allowed patent? Did that happen in this case?

  2. 4

    The court indulges (slip op. at 12–13) some woolly thinking here, to the detriment of sound law:

    Ono also urges us to hold categorically that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention. Such a rule would ignore the realities of collaboration, especially that collaboration generally spans a period of time and may involve multiple contributions. It is certainly true that simply informing another about the state of the prior art does not make one a joint inventor. Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 981 (Fed. Cir. 1997) (holding that explaining the state of the art and providing well-known information found in textbooks was insufficient for joint in- ventorship). But a collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception. Inventorship of a complex invention may depend on partial contributions to conception over time, and there is no principled reason to discount genuine contributions made by collaborators because portions of that work were published prior to conception for the benefit of the public. Earlier publication of an invention is obviously a potential hazard to patentability, but publication of a portion of a complex invention does not necessarily defeat joint inventorship of that invention, and it does not here.

    In a sane legal regime, Ono’s explanation of the law would be more right than wrong. When A, B, & C each contribute ideas to a joint invention, and then B & C go and publish their ideas (less than one year) before the application is filed, A should have an option. If A’s own ideas are patentable nonobvious even in view of the B/C publication, then A should be free to claim her own ideas without listing B or C as inventors. In other words, A should be free to treat the B/C ideas as prior art, and if A’s ideas constitute a nonobvious advance over those ideas, then A gets the patent all to herself.

    A should only be obliged to list B & C as inventors in the circumstance where her ideas would be patentable against a prior art backdrop that lacks the B/C disclosure, but not against a prior art backdrop that includes the B/C disclosure. In that world, A needs to list B & C as inventors so that they can give Rule 130 declarations to remove their pre-filing publication as prior art.

    The rule that I just explained offers A an incentive to claim narrowly so as to have the patent all to herself. The rule actually announced by the CAFC yesterday creates a situation in which it is not possible not to join the other inventors, in which case the incentive will always be to claim more broadly. As a matter of public policy, we should want to incentivize narrow claiming (or rather, incentivize a more capacious public domain), so yesterday’s rule frustrates sound public policy.

    1. 4.1

      Bother, I forgot to close my blockquote. Hopefully you can still follow my argument. Sorry about that.

    2. 4.2

      I get this quote.

      I have one patent application for a big corporation where I had to keep along one really broad claim and then some dependents so all the inventors would continue to be included.

  3. 3

    Inventorship raises many questions.

    Company X employs inventor A, who in 2020 invents adding two arms to a known seat.

    Scenario 1
    Company Y’s inventor B invents a chair comprising a seat, in 1920.
    In 2020, inventorship of the seat and arms seems pretty clearly to be inventor A.

    Scenario 2
    Company X’s inventor B invents a chair comprising a seat, in 2000.
    In 2020, tell me the inventorship.

    Scenario 3
    Company X, inventor B invents a chair comprising a seat, in 2018.
    In 2020, tell me the inventorship.

    Does it matter if inventors A and B work on the same team? Are at the same company? If inventor A learned of the old invention from inventor B? If inventor B filed an application? How well known inventor B’s invention is? How much time has passed between the 2 inventions?

    If company A employs inventors A-Z, and over a period of 26 years, they all work together on improvements to chairs, such that in year 1 inventor A adds an element and files an application, in in year 2 inventor B adds an element and files an application . . ., on year 26 does the application name 26 inventors if the claim includes all the improvements? When does previous technology become old enough (or become something else) so that someone who invented something that is in your claim does not need to be named as an inventor? If old Joe at Ford invented the windshield wiper in 1950, claiming an arm configured to remove water from a glass surface, and old Joe works at Ford until he is 100, should old Joe be named on every Ford windshield wiper patent that claims, in part, an arm configured to remove water? For long many years do you list old Joe on the patent?

  4. 2

    As a patent attorney, I reduce inventions to constructive reduction to practice. Does that make me an inventor now?

    1. 2.1

      More particularly, does this mean that mere reducers can be inventors now?

      1. 2.1.1

        That would be a negative to both (although I ‘get’ why you are asking).

    2. 2.2

      Don’t sell yourself short. Plenty of prosecutors end up cobbling together an “invention” that the name plate inventor likely never considered.

      1. 2.2.1

        Ben, your feelings are noted (as is the fact that before you as an examiner ever see anything, those selfsame inventors have signed an oath which makes your statement rather asinine on its face).

        By the way, I ‘get’ what you are trying to say (rather inartfully), but you simply make a mistake as to what ‘scriveners’ do in preparing the legal document (as opposed to an inventor’s non-legal technical description).

      2. 2.2.2

        Ben never misses a shot to tro ll.

        1. 2.2.2.1

          The funny thing is, his tr011ing is pretty pitiful.

          I bet that he misses Malcolm (not that Malcolm was any less pitiful…).

          1. 2.2.2.1.1

            I still think Ben is the replacement for MM.

            Maybe different people but probably paid by the same people.

            MM went insane towards the end.

            1. 2.2.2.1.1.1

              The “end”? What happened?

              1. 2.2.2.1.1.1.1

                Even outside of his “you have challenged me, so I have blocked you” ineptitude, Greg is simply NOT very observant.

              2. 2.2.2.1.1.1.2

                Greg, MM started to endless rant about Trump. He used to do that but very infrequently.

                And he started to accuse people of heinous crimes that were obviously meant to defame them.

            2. 2.2.2.1.1.2

              MM went….?

              Exactly where in his fifteen year (documented) reign of blight do you think that he EVER was sane?

  5. 1

    Not tied directly to this case, but the ‘reasoning’ here may well open a can of worms in that AI inventions (in the realm of MORE THAN merely using AI as a tool) may invoke a need to have the AI as a joint inventor — even if not as the pure ‘Devisor.’

    by the by… “ as verification that an invention actually works
    is part of its reduction to practice
    ” dictates MORE that AI be the pure ‘Devisor’ (in certain discussions).

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