A federal appeals court has ruled that the U.S. Patent Office is the proper venue for two scientists’ claim that rival researchers used information from a journal article they’d submitted for peer review to complete two patent applications.
The U.S. Court of Appeals for the Federal Circuit in Rubin v. The General Hospital Corp. affirmed District of Massachusetts Judge Denise Casper’s April 2011 summary judgment for Boston’s Massachusetts General Hospital.
Casper had reasoned that the teams of scientists at different institutions could not be joint inventors of the hospital’s patents under the U.S. Patent Code because they "did not have a collaborative relationship."
Dr. Berish Rubin and Dr. Sylvia Anderson of Fordham University’s Department of Biological Sciences filed suit in January 2009 to correct inventorship of or invalidate the two patents assigned to the hospital. Each team of scientists had been researching genetic mutations that cause Riley-Day Syndrome, a nervous system disease involving cardiovascular and gastrointestinal complications and pneumonia.
After Rubin and Anderson linked two genetic mutations to the disease, they sent an article manuscript to The American Journal of Human Genetics in December 2000. The editor disregarded their request not to send it to the hospital, but a hospital scientist declined to review the article, according to court records.
That same month, hospital scientists submitted an article identifying the same mutations. Both articles were published in the journal’s January 2001 edition.
Each team of scientists filed provisional patent applications that January. The hospital scientists were issued two patents on the inventions in 2008.
Judge Pauline Newman wrote the March 28 opinion, joined by Senior Judge William Bryson and Northern District of California Judge Jeremy Fogel, sitting by designation.
Newman wrote that although the patent code allows corrections of a patent’s named inventor, "the record does not support ‘correcting’ the named inventorship of the [hospital] patents."
The dispute, he continued, ultimately was about who was the first to invent, which "is appropriately determined by [patent office] procedures."
Inventorship disputes are relatively common in academic research because so much licensing revenue is at stake with pharmaceutical patents, said Brian Gaff, an intellectual property partner at Boston’s Edwards Wildman Palmer, who argued for the hospital.
"Both courts made the point that this kind of an allegation is at its core an allegation of somebody believing they were the first to invent. The patent office has had a long-standing procedure to address that," Gaff said.
Peter Bernstein, a partner at Scully, Scott, Murphy & Presser of Garden City, N.Y., who argued for the plaintiffs, said, "We have no comment at this time."
Sheri Qualters can be contacted at firstname.lastname@example.org.