In Falana v. Kent State University, the Federal Circuit addressed the sometimes difficult question of inventorship, and found that a scientist who had contributed to the invention of a method of making a genus of claimed compounds should have been named as an inventor on a patent that claimed those compounds.

The Patent at Issue

The patent at issue is U.S. Patent 6,830,789. As reflected in the abstract and discussed in the Federal Circuit decision, the patent is directed to “chiral additive” compounds that are useful in liquid crystal displays. The patent resulted from a directed research effort to develop temperature independent, high helical twisting power chiral additives.

Evolution of the Invention

Falana developed a synthesis protocol for making a novel “genus” of chemical compounds: naphthyl substituted TADDOLs. As summarized by the Federal Circuit, “Naphthyl substituted TADDOLs differ from the general class of TADDOLs in that they include a substituted naphthyl aryl group, rather than a phenyl, substituted phenyl, or naphthyl aryl group.”

Falana used this method to synthesize a compound that met some of the objectives of the research program, but Falana’s compound did not exhibit temperature independence over the full target temperature range. Falana’s compound was an SS enantiomer that exhibited temperature-independence from −20°C to +30°C.

Subsequently, one of the named inventors, Seed, used Falana’s method to synthesize a compound that did have the desired properties. Seed’s compound was an RR enantiomer that exhibited temperature-independence from −20°C to +70°C.

As noted above, the patent claims a genus of chiral compounds. The district court construed the claims as reciting RR enantiomers. The patent specification discloses the synthesis protocol developed by Falana as the protocol utilized to synthesize the claimed genus of chiral compounds, but Falana never made an RR enantiomer within the scope of the claims.

The Inventorship Issue

The Federal Circuit summarized the law of joint inventorship as follows:

  • A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed.
  • 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.
  • [T]he critical question for joint conception is who conceived . . . the subject matter of the claims at issue.
  • The statute does not set forth the minimum quality or quantity of contribution required for joint inventorship . . . . Each joint inventor, however, must contribute in some significant manner to the conception of the invention.
  • Conception of a chemical compound requires knowledge of both the specific chemical structure of the compound and an operative method of making it.

It is this last point that may have been most important to Falana’s inventorship.

The Federal Circuit explained, that “the conception of a chemical compound necessarily requires knowledge of a method for making that compound.” However, [i]n some circumstances, the method of making a compound will require nothing more than the use of ordinary skill in the art.” In those cases, “the contribution of that method would simply be ‘[t]he basic exercise of the normal skill expected of one skilled in the art’ and would not normally be a sufficient contribution to amount to an act of joint inventorship.”

On the other hand, “[w]here the method requires more than the exercise of ordinary skill, . . . the discovery of that method is as much a contribution to the compound as the discovery of the compound itself.” This “is simply the application of the well-known principle that conception of a compound requires knowledge of both the chemical structure of the compound and an operative method of making it.”

[T]his court holds that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.

The Federal Circuit explained further, that “such an inventor” may not have a right to claim inventorship of all species within that genus which are discovered in the future. In particular, “[o]nce the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the store-house of knowledge that comprises ordinary skill in the art.” Moreover, the underlying requirement of “collaboration or concerted effort” will limit instances of joint inventorship.

Inventorship Under the America Invents Act

The America Invents Act (AIA) adds new definitions to 35 USC § 100, which take effect March 16, 2013:

(f) The term ‘inventor’ means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
(g) The terms ‘joint inventor’ and ‘coinventor’ mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

Some commentators have asked if  these definitions broaden the concept of joint inventorship and eliminate the requirement of collaboration. However, in Falana, the Federal Circuit cites 35 USC § 116  in support of its characterization of the law of joint inventorship, and the relevant paragraph of this section of the Patent Act was not amended by the AIA:

When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. 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.

Thus, it is likely that joint inventorship still will require “collaboration or concerted effort.”

In any event, Falana reminds us that, for patents directed to new chemical compounds, an inventorship determination must include an inquiry into who conceived the method of making the claimed compounds, and whether the contribution of that method reflects only the exercise of ordinary skill or amounts to an act of invention.