What is the Level of Contribution for Joint Inventorship?

Ono Pharmaceutical Co., Ltd., v. Dana-Farber Cancer Institute, Inc. (Supreme Court 2021)

The Federals Circuit issued an important decision in this case back in 2020 that, in my view, further lowered the bar for joint inventorship. Traditionally, we have thought that a joint inventor must do more than simply tell the other inventors about the current state-of-the-art. In Ono, some of the inventive contribution made by Dana Farber scientists was published and made part of the prior art before the complete conception of the invention as claimed.  On appeal though, the Federal Circuit found those contributions could still count toward joint inventorship:

[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.

Fed. Cir. Opinion.  The end result in the case was that Dana Farber became co-owner of valuable patents to which Ono had previously claimed sole rights.

Now, Ono has petitioned the U.S. Supreme Court with the following question:

[35 USC 116] provides that “when an invention is made by two or more persons jointly, they shall apply for a patent jointly.” A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256.

The Federal Circuit has held that “to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

In this case, in conflict with this Court’s guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception. App. 13a.

The question presented is:

Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception.

[Ono Petition for Writ of Certiorari].

Note here that the 4th Circuit decision referenced here is an Levin v. Septodont Inc., 34 Fed. Appx. 65 (4th Cir. 2002)(unpublished).  In that case, Levin sued Septodent for breach of contract associated with payments on a patent sale agreement. The district court, found no breach because the patent was invalid for failing to properly list Donald Kilday as an inventor. In its decision the 4th Circuit explained the “significant contribution” requirement of a joint inventor should focus on patentability — “asking whether the contribution helped to make the invention patentable.”  Note that in that case, 4th Circuit was purporting to follow the Federal Circuit’s decision in Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998).  Pannu remains good law and was extensively cited and quoted in the Federal Circuit’s Ono opinion.

The petition cites one 19th century case – O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1853).  In its decision, the Supreme Court wrote that Morse should still be considered the inventor, even though he had received information and advice from various “men of science.”

Neither can the inquires he made, or the information or advice he received, from men of science in the course of his researches, impair his right to the character of an inventor. No invention can possibly be made, consisting of a combination of different elements of power, without a thorough knowledge of the properties of each of them, and the mode in which they operate on each other. And it can make no difference, in this respect, whether he derives his information from books, or from conversation with men skilled in the science. If it were otherwise, no patent, in which a combination of different elements is used, could ever be obtained. For no man ever made such an invention without having first obtained this information, unless it was discovered by some fortunate accident. And it is evident that such an invention as the Electro-Magnetic Telegraph could never have been brought into action without it. For a very high degree of scientific knowledge and the nicest skill in the mechanic arts are combined in it, and were both necessary to bring it into successful operation. And the fact that Morse sought and obtained the necessary information and counsel from the best sources, and acted upon it, neither impairs his rights as an inventor, nor detracts from his merits.

O’Reilly v. Morse, 56 U.S. 62, 111 (1853)

 

 

17 thoughts on “What is the Level of Contribution for Joint Inventorship?

  1. 5

    This just crossed my newsfeed (have not read it yet):

    link to managingip.com

    See discussion points raised below in comment string 3.

    1. 5.1

      Interestingly enough, the article appears to get the UK law wrong on the specific of being the Devisor. Thaler’s efforts there at least established that DABUS was the Devisor (and the issue was that even given that, such was not enough).

  2. 4

    I wonder if the Fed. Cir. decision in Ono Pharmaceutical Co., Ltd., v. Dana-Farber Cancer Institute, Inc. [pending this cert petition] on who can be a joint inventor [even if their contribution had become public prior art?] will impact the two pending interferences on the very important Nobel Prize winning CRISPR/Cas9 genetic scissors invention?

    1. 4.1

      That’s a good question for PatentDocs, seeing as how that place is so very much more detail oriented on that topic.

      1. 4.1.1

        Yes, I will do that.

  3. 3

    Dennis you write that, up to now, to qualify as one of the “inventors”, person: X

    “…must do more than simply tell the other inventors about the current state-of-the-art.”

    in which the key word is “more”.

    I suspect that the context in which X “tells” the other inventors (A, B and C) something might be decisive.

    Suppose, for example, that there is a full-blown “brain-storming” session in which A,B, C and X participate. X listens and when asked, relatively late on in the session, what is the relevant “state of the art” in (say) widget detection technology, delivers a concise answer that is thoughtfully tailored to the needs of the discussion between A,B and C.

    Bearing in mind the definition of “inventor” in the UK Patent Statute as the “devisor” of the claimed subject matter, I can envisage that, here, X ought to be named as co-inventor.

    So, all in all, I think there is room for refinement of the conventional view, what it takes to be named as co-inventor.

    1. 3.1

      Hmmm,

      Not to sidetrack too much, but what if that Devisor is not human?

      1. 3.1.1

        It’s indeed an interesting question, anon, the extent to which an AI (that for example has provided during a brainstorming session a focussed answer to a precise question about one of the “elements” of a claim, which answer enables a more precise definition of the “invention” to be claimed) is fit to be named as co-inventor.

        It brings to mind the story (real or apocryphal) of Google’s AI preparing a shortlist of interview candidates for a job vacancy. The List was manifestly light on female candidates. Why that then? The answer, it turned out, was that the AI had noted how very few females had already advanced to senior positions in the company, and so its algorithm had concluded that females were not worth investing in.

        Those sceptical of AI as “inventor” can say: if the contribution attributed to Ms X could equally well have been made by an AI, then that contribution does not rise to the level of co-inventorship.

        The corollary is, of course, that if the contribution was more than an AI was capable of, then it is indeed that of a co-inventor.

        1. 3.1.1.1

          Certainly, the anecdotal story of ONE application of AI — even as that application may well fall short of, oh, say, the level of DABUS, does NOT categorically provide any type of answer to the question of AI as Devisor.

          Or do you disagree?

          (ps: I have CURRENT applications that I work with on advances directed to not only recognizing such innate biases in any type of training set data, but do so without human intervention)

    2. 3.2

      MaxDrei, what would you say “more” is? For example, A, B, and C conceive a process that includes a complex series of steps. X tells them that a simple prior art method can replace a subset of these steps. The claims to the invention are drafted in a way that the use of the prior art method is covered by a generic claim, but there is no specific claims to the method suggested by X. Did X tell “more” than the state of the art?

      1. 3.2.1

        PiKa,

        If I may be so bold as to volunteer an answer from MaxDrei, I would hazard a guess that his point may be something as subtle as recognizing the presence of an issue.

        In this case, A, B, and C are plodding forth, not recognizing that an issue exists (that is, that their technical solution is NOT a new solution given the state of the art). X is ‘doing more’ by redirecting A, B, and C.

        In your immediate statement of 3.2 though, your premise indicates that the scriviner has erred by not putting into the claims any such ‘more.’

        In that sense, your premise is a bit of a misnomer from what MaxDrie is (or, perhaps more accurately, may be) saying. The way that you have postulated the claims drafted, NONE of A, B, C, or X would be obtaining a patent, and the nullity deprives your question of the meaning that you may be looking for.

        1. 3.2.1.1

          Well yes, indeed anon. I’m just picking up on the expression “something more” and trying to catalyze discussion as to the extent to which “something more” is useful as a test of patentability. Frankly, it doesn’t impress me much.

          My notion of inventorship is informed by the law in Europe. It might not fit with US notions of inventorship. For what it’s worth here, in Europe, we have the idea that the claims of any one single patent application have to be confined to just one inventive concept, before they can be passed to issue. So, for inventorship, we want to know who contributed something to the invention of that concept. Dependent claims are directed to preferred features of that concept, or optional features that can grace that concept.

          Only in relation to a fully formed independent claim that defines the concept can you start the enquiry into who to name as the inventor(s) of that concept.

          1. 3.2.1.1.1

            Very much appreciated, MaxDrei.

            So I beg your indulgence to venture just a little further here off the direct target of this thread and explore a wrinkle that is not available in the DABUS case.

            Let’s say that this decision holds.

            But unbeknownst (somehow), the real identity of X is DABUS.

            What then? Would having human co-inventors suffice?

            Or would the necessity of sharing credit doom the otherwise legitimate in all aspects patent to oblivion?

            For others that may join the conversation, please be aware that in this discussion, X is properly a Devisor. This is NOT the instance in which someone is merely using a computer — that would be rather UNinteresting.

            1. 3.2.1.1.1.1

              Who knows, anon. I have no idea. Sorry.

              1. 3.2.1.1.1.1.1

                Fair enough, although I would posit under controlling US law that the answer for US matters is that a co-inventor that is not human DOOMS the entirety of the patent.

                Such may well be an issue in future litigation (and cause trepidation now), given the possible differences in opinions from people that claim that AI “use” is only ‘using a machine’ and the notion (as sussed out here with A, B, C, and X) that the TYPE of “just use” that amounts to a necessity of giving credit to X takes the AI aspect out of the traditional ‘use of machine,’ and focuses on the Devisor aspect.

                I reflected on this in discussions past by way of my thought experiment of taking the item made by Devisor X, putting it in a box, taking that box into a next room and having a random person open the box and read the item devised by another.

                As in that example, if that person in the next room is not the actual Devisor, then the post hoc revelation of Devisor X being a (different) real human of an AI cannot change the state of that person merely opening up the black box.

                The setting here of “joint inventors” actually amplifies the necessary result of my prior explanation.

  4. 2

    Thanks Night.

    Question for Big Blue:

    Time now to join the just cause of returning patent eligibility to all areas of innovation — including for all of your plethora of past, current — and future — innovations?

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