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special to the national law journal Matthew B. Lowrie is a partner and chairman of the litigation practice group at Boston’s Wolf Greenfield. A patent attorney, he secures and enforces patents in a broad array of technologies, including electrical circuits, computer architecture, software, medical devices and consumer products. He can be reached at District courts are empowered to change the named inventors on U.S. patents. Such claims are often referred to as § 256 claims, after the section of the Patent Act authorizing the district courts to do so. Under § 256, a party can add, substitute or remove inventors listed on the patent. If successful, the party can acquire partial or full ownership of an issued (and potentially valuable) patent. Recently, § 256 claims have been getting increased attention from lawyers defending patent suits, in actions filed to grab some or all of the value of a patent and among lawyers prosecuting patent applications. The U.S. Patent Act expressly requires that patent applications be filed in the name of the “inventor.” 35 U.S.C. 111(a)(1). The act also recognizes that a patent may have more than one inventor. Sec. 116 provides that: “When an invention is made by two or more persons jointly, they shall apply for a patent jointly . . . .Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” Joint inventorship undefined The statute quoted above is quite clear on what is not required for joint inventors. It provides little guidance, however, as to what does constitute enough of a contribution to make someone a joint inventor. One must contribute to the “conception”-i.e., the “formation in the mind of the inventor of a complete and definite idea”-such that only ordinary skill is required to reduce the invention to practice. The boundary between what is a patentable invention (or a contribution to it) and a contribution that is just ordinary skill is extraordinarily difficult. Judge Learned Hand said that patentability is “as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts . . . .If there be an issue more troublesome, or more apt for litigation than this, we are not aware of it.” Harries v. Air King Products Co., 183 F.2d 158, 162 (2d Cir. 1950). Muddy concept When the inquiry then turns to how much someone contributed to the conception of the idea in a particular patent claim, the difficulty can be immense. One court put it as follows: “The exact parameters of what constitutes joint inventorship are quite difficult to define. It is one of the muddiest concepts in the muddy metaphysics of patent law.” Mueller Brass v. Reading Indus., 352 F. Supp. 1357 (E.D. Pa. 1972). Thus, the available parameters appear somewhat cryptic. For example, there must be “some quantum of collaboration or connection.” Kimberly-Clark Corp. v. Procter & Gamble Distribution Co. Inc., 973 F.2d 911 (Fed. Cir. 1992). From the statute, however, that quantum need not be in the same time, place or amount. At a similar level of obscurity, “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 & Chemical Co. v. Ewen, 123 F.3d 1466 (Fed. Cir. 1997). How that is done can be a mystery to judges and litigants alike. What is clear, however, is that the assessment of joint inventorship is made for each claim of the patent-and many patents have hundreds of claims. What is more, making an inventive contribution to even a single claim of a patent makes the contributor a joint inventor on the entire patent. With tests this nebulous (or even clear tests), mistakes can be made, of course. As a result, when adopting the Patent Act in 1952, Congress permitted inventors to correct the named inventors to alleviate the harsh consequences of a good-faith mistake. In 1982, Congress amended the statute to permit complete substitution of named inventors. The naming of inventors can be changed by the U.S. Patent and Trademark Office (PTO), or ordered by a court under § 256, to preserve the validity of the patent. The patent is not enforceable, however, unless corrected. Rights of joint inventors A joint inventor has the right to license the entire patent to third parties, without a duty to account to any other joint owners. Thus, a contribution to an obscure (and relatively meaningless) claim among hundreds of claims can give the contributor full and equal rights in the patent. In the situation in which co-employees are joint inventors, the circumstance usually is not troublesome. When employees are “employed to invent,” they have a duty to assign rights in their inventions to their employer. As a result, one party (the employer) typically owns all rights in the patent. Many other possibilities exist, however. Potential joint inventors are lurking as subcontractors, manufacturers, testing outfits, research partners or even people engaging in chitchat at a cocktail party. When joint inventors do not have to assign their rights to one party, each has a joint interest in the patent. As a result, a defendant in a patent case can endeavor to find someone who arguably contributed to any claim in the patent, secure a license from that person for whatever they may have and use the license as a defense. Two illustrative cases Two Federal Circuit cases demonstrate how this approach can be employed. In the first, Burroughs Wellcome sued Barr Labs over a patent directed to the drug AZT. Burroughs Wellcome Co. v. Barr Labs. Inc., 40 F.3d 1223 (Fed. Cir. 1994). When the Burroughs scientists first learned that AZT was active against the HIV virus, they sent AZT to the National Institutes of Health (NIH) for testing. The results of these tests established AZT’s exceptional activity against the virus. Barr obtained a license from the NIH and argued that the NIH was a joint inventor because its testing amounted to joint invention. The Federal Circuit ruled in favor of Burroughs, relying heavily on the fact that Burroughs had drafted a patent application covering AZT for use against HIV before the NIH testing. The court ruled that the Burroughs scientists had already conceived of the invention before the testing, and therefore the NIH scientists did not contribute to it. It is easy to imagine, however, circumstances in which Burroughs could not have established preconception, e.g., had the patent application been drafted later. A second case provides an example of a successful defense. Here, Ethicon sued U.S. Surgical Corp. over a patent on trocars, which are surgical instruments used to make small incisions through which tools may be inserted for endoscopic surgery. Ethicon Inc. v. United States Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998). When developing the patented device, the named inventor (a medical doctor) worked with an electronics technician to develop a marketable device. The relationship ended when the technician quit, under the belief that the doctor found his work unsatisfactory and unlikely to result in a marketable product. The doctor received a patent with 55 claims, including many that covered general principles to which the technician did not contribute. U.S. Surgical, after being sued for infringement, learned of the technician and took a retroactive license from him to cover any past infringement. The court found that the technician contributed to two of the claims, and went on to hold that the contribution entitled the technician to license the patent prospectively. The court also held that the joint inventor was a necessary party for any suit claiming past damages. Since the joint inventor could not join in any suit for past damages (under his contract with U.S. Surgical), the deal U.S. Surgical cut with the joint inventor fully eliminated any Ethicon claim for damages. Adding names to an invention Section 256 is used as a sword as well as a shield. A number of parties have filed suit to be added as a joint inventor, and that number appears to be increasing. If successful, the joint inventor can then license the patent. In some circumstances, these claims should have little value, e.g., when multiple patents cover the same product; a license to use only one has no independent value. When a single patent covers the field, however, a joint inventor can force the original patent owner to come to terms or lose its exclusive rights. Indeed, in that circumstance, the original patent owner cannot reliably bring a suit on that patent (unless others are asserted as well) without the risk of the unnamed joint inventor selling the suit out from under the original patent owner. Since inventors can be added and removed under § 256, when the two are combined, the result can be particularly devastating. After complete substitution, the former patent-holder is now likely practicing a patent that it infringes. It will thus have a difficult time challenging a claim of infringement and a difficult time in attacking the validity of the patent-a patent that it argued for in front of the PTO. Indeed, this type of claim was asserted by the University of Colorado against American Cyanamid Co. University of Colorado Foundation Inc. v. American Cyanamid Co., 196 F.3d 1366 (Fed. Cir. 1999). In that case, the Federal Circuit held that two university doctors could be substituted for the named inventors-which would leave the defendant in a position where it could be accused of infringing a patent that it had touted and that it had advertised as covering its products. Sec. 256 claims are on the rise. According to a LexisNexis search, there were at least twice as many decisions concerning cases with § 256 claims in the first two years of this decade than in the first two years of the last decade. One might wonder why. Several factors are likely to be contributing to this. First, some § 256 cases have been successful. A little success can lead to a multiplication of suits. Second, the principles involved are extremely difficult and vague. What is more, as technologies evolve, research efforts are more likely to involve discussion among others-raising the number of people who could claim joint-inventor status. As a result, people claiming joint-inventive status can always hope for some chance of success, even if they know they made no real contribution. Indeed, a § 256 action can be the fodder for contingency litigation. The claimant may be an individual with a lot to gain-if a dominating patent is at stake-and little to lose. When the stakes are high, some suits seem to be filed in the hope of extorting a settlement (given the high cost of patent litigation) even when the underlying claim lacks substantial merit. Lessons learned The rise of § 256 claims has amplified the importance of steps taken by patent owners to reduce vulnerability to these types of claims. While it is easy to toss details into patents and then recite them in dependent claims, lack of care can result in a dependent claim addressing structures contributed by advisors, manufacturers or subcontractors-all of whom may not have a duty to assign rights to the patent applicant. Using the Ethicon case as an example, the patent at issue may have had as much value even if the patent had omitted the two claims that covered parts of what the joint inventor contributed. (It is also worth noting that deliberately omitting a joint inventor, or failing to disclose material facts concerning the proper naming of inventors, can constitute inequitable conduct, rendering the patent unenforceable.) Records can be crucial Similarly, being right is sometimes not enough; the patent owner may be forced to prove it. A person seeking to change the named inventors has the duty to prove by clear and convincing evidence that a change is appropriate. That proof must include corroboration of the inventive contribution. It is not uncommon in these cases, however, for the patentee to feel as though it is a defendant having to prove each of its ideas was its own. Thus, records of development (independently corroborated) can be very helpful and, as in the draft application in the Burroughs case, can prove dispositive. Agreements concerning ownership of intellectual property rights can also be of tremendous value. They are also far easier to secure before a patent application has been filed than after a patent has been secured and the invention has proved valuable. Using Burroughs as the example, a significant part of the litigation could have been avoided by a testing agreement that included provisions about intellectual property ownership. In litigation, the possibility of a joint inventor should be kept in mind as a defense and pursued when appropriate. Finally, the ambiguity of the law and the number of potential parties that could assert an arguable claim to status as a joint inventor may lead to the rise of the § 256 strike suit, filed to play on the sympathies of the jury for a small outfit or individual against a large corporation.

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