5. Inventorship

Patents / Biotechnology / US Biotechnology Practice

5. Inventorship

The United States Constitution provides for the grant of patents to "inventors" and, unlike most countries in the world, patent applications must be filed in the name of the actual inventors of the subject matter to be protected and not in the name of their employer or other assignees. The requirement of United States law that patents are granted not to the first person to file a patent application, but (subject to certain provisos) to the first person to invent the subject matter makes the question of determining actual inventorship more important in United States patent practice than elsewhere.

The issue of inventorship is always a difficult one. However, it seems clear that merely suggesting an idea or desideratum without suggesting means to implement the idea or to achieve the desideratum is not itself an act of inventorship, at least in cases where the recipient of the idea or suggestion had to carry out substantial experimentation to achieve a practical result. [78] Indeed, in Huck v. Textron [79] the court stated:

The suggestion or conception of an idea or appreciation of a result to be accomplished, rather than the means of accomplishing it, particularly when the means constitute an essential part of the invention, does not constitute joint or sole inventorship. The mere fact that others made suggestions and possibly gave assistance does not necessarily make them inventors.

On the other hand, the courts have held that once conception has occurred, the inventor may make use of the services of others in perfecting his invention without losing his right to a patent [80] and that merely taking the idea of another and devising alternative means of implementation does not rise to the level of "inventorship". [81] A person who merely suggests something to aim at without contributing to the means needed to reach that objective will not normally be an inventor, unless perhaps the definition of the aim was in itself inventive. In the case of new chemical compounds, an idea as to the use of the compound is necessary for conception to be complete.

A useful example of how to determine inventorship is found in the AZT case, Burroughs Wellcome Co. v. Barr Laboratories Inc. [82] In this case the facts were as follows:

1) the NIH had devised a test to test the efficacy of candidates for inhibition of HIV using live HIV and a unique line of T-cell clones.
2) Burroughs Wellcome had tested AZT in laboratory mouse screens and had found it to have an effect on retroviruses (HIV is a retrovirus) and based on this proceeded to prepare a patent application for filing in the UK covering treatment of persons infected with HIV by use of AZT.
3) Two days prior to the finalization of the draft patent application Burroughs sent a sample of AZT under a code number to the United States National Institute of Health (NIH) for testing in its more powerful test, noting the results that it had achieved itself in its mouse screens.
4) The NIH found the sample sent to be tested by Burroughs effective against HIV in its test and advised Burroughs who then filed the patent application.

In an infringement action, the defendant argued that the invention had not been made until the NIH testing was done and that the persons at the NIH who had carried out the tests were co-inventors. In their view up to that point conception of the invention was not complete. As noted by the court,

They argue that [reasonable] expectation [of success] is of paramount importance when the invention deals with uncertain or experimental disciplines, where the inventor cannot reasonably believe an idea will be operable until some result supports that conclusion. Without some experimental confirmation, they suggest, the inventor has only a hope or an expectation and has not yet conceived the invention in sufficiently definite and permanent form. But this is not the law. An inventor's belief that his invention will work or his reasons for choosing a particular approach are irrelevant to conception.

The draft patent application was found to be ample evidence that the invention had been made without the contribution of the NIH. The Court noted that conception is the touchstone of inventorship and so each inventor had to contribute to the conception of the invention and this was complete when only ordinary skill would be necessary to reduce the invention to practice without extensive research or experimentation.

Although it is not necessary for inventors physically to work together for them to be joint inventors, some form of collaboration between them is necessary. [83] 35 USC 116 sets out certain rules on the question of joint inventorship pointing out that to be a joint inventor, each inventor may make a different type or amount of contribution, and that it is no longer necessary that each inventor made a contribution to every claim. [84] It is, however, necessary that each inventor made a contribution to at least one claim. [85]

[78] See, for example, Garrett Corporation v. United States, 422 F.2d 874, 164 USPQ 521 (Ct. of Clms. 1970) and International Carrier-Call and Television Corp. v. RCA, 142 F.2d 493, 61 USPQ 392 (2nd Cir. 1944).

[79] 187 USPQ 388 (S.D. Mich. 1975).

[80] Central Soya v. Hormel, 205 USPQ 421 (W.D. Okla. 1979), aff'd 645 F.2d 847, 209 USPQ 915 (10th Cir. 1981).

[81] Dow Corning v. Surgitek, 378 F.Supp 1128, 182 USPQ 688 (E.D. Wis. 1984).

[82] 40 F.3d 1223, 32 USPQ2d 1915 (Fed. Cir. 1994).

[83] Kimberly Clark Corp v. Procter & Gamble Distributing Company Inc., 23 USPQ2d 1921 (Fed. Cir. 1992).

[84] 35 USC § 116 was amended in 1984 to provide that a joint inventor need not make a contribution to every claim of the patent.

[85] 35 USC § 116 and 37 CFR 1.45.

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