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Inventorship case shows need to track even minor contributions before patent filing

By Jesse Schwartz
Published: October 28th, 2020

A detailed analysis of Dana-Farber’s successful effort to include its researchers as co-inventors in a valuable set of cancer treatment patents, and the lessons it reveals for TTOs, appears in the October issue of Technology Transfer Tactics. To subscribe and access the full article, click here.

Inventorship is not always an easy thing to define when dealing with patent law, and even a seemingly minor contribution to a patented invention can determine rights to lucrative revenue streams. A recent Federal Circuit Court ruling decided in favor of the Dana-Farber Cancer Institute is a case in point, and also serves as a pointed reminder that all contributions must be documented and memorialized to ensure those contributions aren’t swept under the rug in the patent office.

In the case in question, six patents were granted roughly two decades ago for groundbreaking work in the field of cancer treatment — a method that administers antibodies targeting specific receptor-ligand interactions on T cells. Dana-Farber later sued, claiming that two doctors from its staff should be deemed inventors alongside Dr. Tasuku Honjo, who later won a Nobel Prize for his work. Also defendants in the case as patent assignees were Ono Pharmaceutical Co, Ltd., E.R. Squibb & Sons, LLC, and Bristol-Myers Squibb Company.

The original IP rights listed only Honjo, two fellow Kyoto University academics and an Ono Pharmaceutical researcher as inventors. In its claim against the patents, Dana-Farber cited collaboration between its researchers and Honjo — including correspondence, a jointly published journal article, and a joint presentation of collaborative research results at a conference.

In July, the Fed Circuit upheld a district court finding that the Dana-Farber researchers must be listed as inventors so that Honjo, Ono Pharmaceutical and Bristol-Myers Squibb no longer have exclusive ownership of the lucrative patent rights, and the cancer center could reap a significant windfall.

The Fed Circuit decision noted that to be a joint inventor, one must: (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. [Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); quoted in VerHoef, 888 F.3d at 1366.]

Attorney Paul E. Rauch, founding and managing partner of Evan Law Group in Chicago, who was not directly connected with the Dana-Farber litigation, says the case “really reminds us that the contribution someone needs to be an inventor may be a special type of contribution, and it can be extremely small, and that we shouldn’t rely on the inventors to make the determination about inventorship.”

To that point, the court noted precedent stating that there is no “explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor.” [Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004) (quoting Fina Oil, 123 F.3d at 1473)]. “People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution.” [Burroughs Wellcome, 40 F.3d at 1227 (citing 35 U.S.C. § 116)].

Based on those holdings, Rauch advises, “we should sweep everybody in who was a participant in almost any fashion in the whole process — conception and reduction to practice — and then we should allow an attorney to do the analysis. When in doubt, sweep [contributors] in as inventors. At the beginning, we can collect all the rights, because people don’t smell money at the beginning; they smell money at the end of the process.”

This especially applies to the evolving specialty of data analysis, because experts who can find patterns in data that lead to interesting developments and patented innovations will become more valued, though they may not have been traditionally thought of as co-inventors, Rauch notes. “Maybe the laboratory scientists don’t always view those people as having made an inventive contribution. That might be challenging to capture and I think we’re going to see more of that in the future,” he comments.

Rauch notes that removing those who were swept in initially but do not qualify as co-inventors is “simple, easy, and not limited regardless of how it came about. So, if you’re over-inclusive, you’re going to gather all the rights together and avoid the risks that could damage your ability to license. And if you include people who shouldn’t have been included, then you can drop them very easily later on, even if the attorneys made a mistake.”

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