In Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd.,1 the Federal Circuit held that publication of a part of a complicated invention did not automatically preclude joint inventorship of that invention.
The court indicated that a complete conception does not require an inventor to know that the invention will work. Rather, a complete conception is achieved when an idea is definite and permanent such that one of ordinary skill in the art could understand it. The court explained:
Conception is the touchstone of the joint inventorship inquiry, . . . and conception is complete when an idea is definite and permanent enough that one of skill in the art could understand the invention, . . . An inventor need not know, however, that an invention will work for its intended purpose in order for conception to be complete, as verification that an invention actually works is part of its reduction to practice.2
The court rejected a categorical rule that would disqualify co-inventorship if it were based on research published prior to a complete conception. The court explained:
[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year prior to the disclosure, and the disclosure occurred just a few weeks prior to conception.3
The court continued:
Inventorship of a complex invention may depend on partial contributions to conception over time, and there is no principled reason to discount genuine contributions made by collaborators because portions of that work were published prior to conception for the benefit of the public. Earlier publication of an invention is obviously a potential hazard to patentability, but publication of a portion of a complex invention does not necessarily defeat joint inventorship of that invention, and it does not here.4
Lessons:
* An inventor needs to contribute to the design of the invention and is still considered an inventor even if he or she does not know whether the invention will necessarily work. That fits nicely with the concept that a patent application can be used for constructive reduction to practice. In view of the America Invents Act’s first-inventor-to-file system, that means patent applicants should file as early as possible for priority.
* Disclosure of part of an invention does not necessarily prevent joint inventorship of that invention. Thus, companies that foster collaborative environments should be careful to track contributions of different employees to ensure that the listing of inventors is correct.
* Even though the court held that partial publication of an invention does not preclude inventorship, companies should avoid any publication of invention information prior to reducing an invention to practice and filing of a patent application. The court did warn, however, that early publication could be a threat to patentability.
* Companies that contract with outside consultants or jointly develop inventions with others without an agreement to own the invention should be careful, because joint inventorship creates joint ownership. “In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.” 35 U.S.C. Section 262. Thus, companies should be careful about how inventions are developed, because they might lose exclusive control of jointly developed inventions.
1 Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd., 964 F.3d 1365, 2020 USPQ2d 10775, 2020 WL 3966975 (Fed. Cir. 2020).
2 Id., 964 F.3d at 1372.
3 Id., 964 F.3d at 1372.
4 Id., 964 F.3d at 1372-73.
Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.