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Issue 06/27 | June 21, 2006
Is An Inventor Always An Inventor?

Most jurisdictions require the naming of the inventors who contributed to an invention claimed in a patent application. The identity of inventors in a patent application has a bearing on ownership of the invention and resulting patent. In many jurisdictions failure to correctly name the inventors in a patent application may result in the patent being found to be invalid. However, the laws concerning inventorship vary from jurisdiction to jurisdiction. Accordingly, a person may be considered an inventor in one jurisdiction, e.g., USA, but not in another, e.g., Australia.

The situation in Australia

There has been little judicial commentary concerning the level of contribution required to be considered an inventor. However, the Patents Act 1990 permits the Commissioner of Patents to determine the name in which a patent application is to proceed where two parties are involved in a dispute over entitlement, and several recent decisions of the Commissioner now provide some guidance. In several decisions arising from the Patent Office, the delegate has referred to the landmark US decision Meuller Brass Co. v. Reading Industries (176 USPQ 361 at 372) as the basis of their decisions concerning inventorship. However, whilst this decision discusses the term "final conception", the Australian decisions have not relied heavily on the notion of "conception" as applied under US practice to determine who is an inventor.

Perhaps the decision that is relied upon most often for determining inventorship is that in Harris v C.S.I.R.O. (26 IPR 469), in which the delegate applied the "but for" test to determine whether or not a person is an inventor. In particular, the delegate posed the question "would the invention have occurred without [the person's] involvement (albeit unknowingly at the time)?".

In the case of C.S.I.R.O. et al., the delegate stated that "rights in an invention do not follow an assessment of the inventiveness of respective contribution, but rather from an objective assessment of the contribution simpliciter to the invention". Accordingly, the contribution of a person to the feature that constitutes an inventive step over the prior art is not a primary consideration in determining inventorship under Australian practice. Rather, it is the contribution per se of that person to the claimed invention that is determinative of inventorship.

In Upham and Commissioner of Patents; Victor and Dan Vrubel (Joined parties) AAT No. 13418 [1998] AATA 852 ( 3 November 1998), the Administrative Appeals Tribunal reviewed a number of decisions of the Patent Office, including those discussed above, and stated that a common theme from those decisions is

"that a person has entitlement to an invention if that person's contribution, either solely or jointly with other, had a material effect on the final concept of the invention. A secondary consideration is whether the person's contribution involved a key inventive step."

In that decision, the following principles for determining inventorship were applied:

  1. there must be an objective assessment of the person's contribution simpliciter to the invention;
  2. there must be a determination of whether or not the person's contribution beneficially affected the final concept of the invention and, whether or not that final conception would have been less efficient without that contribution;
  3. a determination of whether or not the invention would have occurred without the person's involvement; and
  4. evidence of collaboration is also useful in assessing objectively whether or not there has been a contribution

In the case of joint inventors the Patent Office has also held that "where one party takes an initial step leading from the problem toward the ultimate solution and their work is taken up and finalized by another, both may be considered to have jointly contributed to the invention" (Pimmcoy Pty Ltd v. Barry Charles Teer [2003] APO 37 (10 September 2003). The Patent Office has also held in Dominic Victor Costa v. GR & IE Daking Pty Ltd [1994] APO 23 (28 March 1994) that joint inventorship occurs where one party has a general idea of what is required to solve a problem, but requires the input of another party to give effect to those ideas.

Contrasting the position in USA

Under US practice, the inventive process involves designing or "conceiving" the invention, and then creating or producing the conceived invention, otherwise known as "reduction to practice". However, identification of inventors focuses entirely on determining who conceived the invention.

In this respect, conception is defined as "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative idea as it is hereafter to be applied in practice" (Townsend v Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). Moreover, conception is only complete when "the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill" (Hiatt v. Zeigler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973)). Of course, more than one person can contribute to the conception of the invention. However, the contributions of the joint inventors need not be equal. Nor do the contributions have to have occurred at the same time (Monsanto & Co. v. Kamp 154 USPQ 259). However, the combined contributions must permit the skilled person to reduce the invention as ultimately claimed in a granted patent to practice without the exercise of inventive skill.

The United States Court of Appeals for the Federal Circuit recently addressed the issue of inventorship in Stern v. The Trustees of Columbia University in the City of New York and Bito (United States Court of Appeals for the Federal Circuit, January 17, 2006, No. 05-1291). In this case, the patent in question claimed a method for treating glaucoma in a primate subject's eye comprising periodically administering a particular compound so as to reduce intraocular pressure in the eye and to maintain reduced intraocular pressure. Stern had previously conducted research for Bito at Columbia University showing that a single application of the compound to the eye of a monkey reduced intraocular pressure. However, Bito had previously conceived of the suitability of primates to study the effects of the compound and had previously studied the effects of the compound on intraocular pressure in other animals. Moreover, Stern only conceived of the idea of repeated administration of the compound to the eye following Bito's departure from Columbia University. Accordingly, the court held that Stern was not an inventor because he did not have an understanding of the claimed invention, did not discover that the compound affected intraocular pressure, did not discover that repeated application of the compound maintained reduced intraocular pressure and did not conceive the idea of using the compound to reduced intraocular pressure in primates.

In another recent case (Board of Education v American BioScience Inc. (Federal Circuit, 23 June 2003, No 02-1109)), four members of a research group from Florida State University who were performing research on derivatives of the compound Paclitaxel, which is the active molecule in the anti-cancer drug TAXOL. Dr Nadizadeh, one of the four researchers, developed a new process for producing such TAXOL derivatives termed a "beta-lactam process" which was utilized by the university research group. Another of the researchers, Dr Tao, subsequently left the university and commenced working for American BioScience, Inc (ABI). Dr Tao continued to research using the "beta-lactam process" and created three new derivative compounds, which formed the basis of the claims of US Patent No. 5,780,653. Dr Tao was the sole inventor named on the US patent.

The Board of Education (on behalf of the university) argued that Dr Nadizadeh should have been named as a co-inventor on the issued US patent because Dr Tao had used the beta-lactam process developed by Dr Nadizadeh. In this case, the court considered the scope of the claims as issued (i.e., defining the identified compounds). The courts decided that notwithstanding that the "beta-lactam" process was used in preparing the claimed compounds, this was not relevant to the determination inventorship of claims to the compounds per se. Because the claims did not define the process for identifying the claimed compounds, the court held that Dr Nadizadeh was not entitled to be named as a co-inventor on the patent.

Conclusion

Notwithstanding that there has been little judicial comment concerning inventorship in Australia, the decisions that have issued by the Patent Office appear to rely on a test that is different to the requirement of complete conception of invention as required in USA. Whether or not this difference will ultimately result in different parties being named as inventors in patents in Australia and USA remains to be seen. For example, in the case of the situation in Board of Education v American BioScience Inc. discussed above, the Australian Patent Office may have considered that Dr Nadizadeh made a material contribution to the compounds claimed in the patent in question in that case. For example, the Patent Office may have reasoned that without Dr Nadizadeh's "beta-lactam process", the claimed compounds would not have been discovered.

Because the issue of inventorship is important to the ownership and validity of a patent, it is important that the inventors to be named in an application/patent are determined based on the relevant law in each jurisdiction. For further or more specific information on determination of inventorship in Australia, please contact Patrick McManamny [pmcmanamny@fbrice.com.au], Chris Owens [cowens@fbrice.com.au] or any of the other practitioners of F B Rice & Co via our website at www.fbrice.com.au.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

APLF - PO Box 7418 - Washington, DC - 20044-7418

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