1. Co-inventorship/Ownership Prof Merges 5/1/08

2. Co-inventorship/Ownership In the first instance, the inventor is the owner Co-inventors are therefore, in the absence of any agreement, co-owners

3. Cases and principles Burroughs-Wellcome; Stark Eli Lilly Ethicon

4. Burroughs-Wellcome Standard for co-invention

5. Burroughs standard 271(e) case Note timing: why important? – Feb, 1985 events NB: “license defense”, p. 1257

6. Burroughs-Wellcome “Coinventorship as a defense to infringement” – License from (putative?) coinventor who has not otherwise assigned his/her interest can provide defense to infringement defendant – Crucial: standard for determining coinventorship

7. Lilly v. Aradigm Lilly-Aradigm joint venture/research project Inventorship as “theft of invention” issue Standard: – Must contribute to conception of at least one claim – Not met here – “Clear and convincing” standard

8. 35 U.S.C. 262 “[I]n the absence of any agreement to the contrary, each owner may make, use, offer to sell, or sell the patented invention within the Unites States, or import the patented invention into the United States without the consent of and without accounting to the other owners.”

9. Rights of Co-owners Each co-owner owns an undivided interest in the entire patent – Not subdivided by claims – Not related to “percentage contribution” of each inventor – Ethicon situation, p. 1272

10. Stark v. Advanced Magnetics Interlocutory appeal Issue: Standard for correction of inventorship

13. § 256. Correction of named inventor Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

14. § 256. Correction of named inventor The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

15. Stark Court earlier rejected estoppel theory put forth by AMI Put squarely question of interpreting section 256

16. Stark Misjoinder: wrongly added inventor Nonjoinder: wrongly omitted inventor

17. § 256. Correction of named inventor Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent [, -- ?] and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

18. Administrative remedy: section 116 Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, and such error arose without any deceptive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

19. Holding Under 256, in misjoinder case, intent of inventors is irrelevant Under 256, in nonjoinder case, only intent of non-joined inventor is relevant

20. Ethicon Co-inventorship  co-ownership  complete defense to infringement

21. Claim 15 “Not insubstantial contribution” by Party D

22. US Patent # 000 Claim 15 Party D’s contribution to the patent

23. US Patent # 000 Claim 15 Inventors: A,B, and C

24. Tenancy in common Inventor D’s contribution Patent 000

25. Bootstrapping a complete defense One “not insubstantial contribution” to one claim leads to complete co-ownership interest in entire patent How to fix or prevent? Research before filing; reissue; 256 action; other?