July 14, 2020

Collaboration and Concerted Effort are What Result in Joint Inventorship

In Dana-Farber Cancer Institute, Inc., v. Ono Pharmaceutical Co., [2019-2050] (July 14, 2020), the Federal Circuit affirmed the district court determination that Dr. Gordon Freeman and Dr. Clive Wood be added to U.S. Patent Nos. 7,595,048, 8,168,179, 8,728,474, 9,067,999, and 9,402,899.

The appeal relates to an inventorship dispute over groundbreaking work in the field of cancer treatment. Each patent at issue claims a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T cells.

Ono challenges the district court’s decision on two bases:

  1. The district court’s legal analysis of conception, and;
  2. The district court’s factual findings regarding inventorship.

Addressing each argument in turn, the Federal Circuit began by explaining that a joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed.

To be a joint inventor, one must:

  1. Contribute in some significant manner to the conception or reduction to practice of the invention.
  2. Make a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention.
  3. Do more than merely explain to the real inventors well-known concepts and/or the current state of the art.

There is no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor. 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.

The Federal Circuit noted that 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.

The Federal Circuit refused to adopt a rule that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention. Such a rule would ignore the realities of collaboration, especially that collaboration generally spans a period of time and may involve multiple contributions.Further, simply informing another about the state of the prior art does not make one a joint inventor. Collaboration and concerted effort are what result in joint inventorship, but a collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others.

The Federal Circuit went on to reject a series of challenges to the district court’s factual analysis for each patent, and concluded that Freeman and Wood were co-inventors, and affirmed the district court.