March 20, 2012

Falana v. Kent State Univ.: Determining the Inventorship of Chemical Compounds

5 min

The U.S. Court of Appeals for the Federal Circuit recently considered what activities rise to a contribution to conception that qualify one to be a joint inventor of a chemical compound in its opinion Falana v. Kent State Univ., No. 2011-1198 (Fed. Cir. Jan. 23, 2012).  The general law of inventorship is as follows.  The inventors listed on a patent include all individuals who made an inventive contribution to at least one claim.  That is, inventorship is determined on a claim-by-claim basis.  A person who conceived the complete subject matter of any claim, including all claimed features, has made an inventive contribution.  The mental act of conception is essential to inventorship.  A person may devote long hours to a project, and his or her efforts may be important to its commercial success, but if these efforts do not include the conception of claimed subject matter, the person is not an inventor.  For example, reducing to practice or carrying out the idea of another does not qualify one to be an inventor.  A person who provides general technical information without contributing to conception is not an inventor.  The collaboration of multiple individuals can complicate the determination of inventorship.  There must be at least one-way communication of information relevant to conception between two people for them to be considered joint inventors - individuals who independently conceive an idea cannot be joint inventors. 

The facts in Falana are important to understanding the Federal Circuit's holding.  As a post-doctoral researcher at Kent State, plaintiff Dr. Olusegun Falana developed a synthesis protocol for making a novel class of naphthyl-substituted TADDOL (tetraaryl-1,3-dioxolan-4,5-dimethanol) compounds of use in LCDs (liquid crystal displays).  Among the compounds synthesized by Falana was Compound 7, which exhibited temperature independence over a range of -20 to +30 °C of the important high helical twisting power property.  This range of temperature independence represented significant progress, but was not sufficiently broad to meet the project goals.  Falana subsequently resigned from the research group.  Another member of the group, Dr. Alexander Seed, then used Falana’s synthesis protocol to synthesize a Compound 9 that exhibited temperature independence over a range -20 to +70 °C, meeting the goals of the project.  An application was filed, later issuing as U.S. Patent Number 6,830,789 (the "'789 Patent"), which listed Seed and others, but not Falana, as inventors.  The application included a generic claim 1 to a naphthyl-substituted TADDOL.  A "generic claim" to a chemical compound encompasses multiple individual compounds, for example, by allowing for the moiety substituted at a position on a molecule to be selected from a list of differing chemical groups.  Generic claim 1 did not expressly include a requirement for a temperature independence range of high helical twisting power.  Falana then filed the present case in the U.S. District Court of the Northern District of Ohio to be added as an inventor to the '789 Patent.  The District Court found for Falana, ruling that he contributed to the conception of the claimed invention and was to be added as an inventor.  The defendants, Kent State and Seed, then appealed to the Federal Circuit.

In their appeal, the defendants argued that the claims should have been construed to be limited to a compound "having a substantially temperature independent high helical twisting power," even though this limitation was not expressly recited in the claims, because the specification so described the inventive compounds, and, without such a limitation, the claimed compounds would be commercially worthless.  The Federal Circuit disagreed, finding no suggestion in the intrinsic record that the applicant intended to so limit the claims.  Therefore, the plain language of the claims governed.  The Federal Circuit affirmed the construction of the District Court, in which the claims were not limited to a compound "having a substantially temperature independent high helical twisting power."

The defendants further argued that even if Falana had contributed to the synthesis protocol, he was not a joint inventor, because the claims were all directed to compounds and not methods, invoking the decision in Bd. of Trs. of Fla. State v. Am. Biosci., 333 F.3d 1330, 67 USPQ2d 1252 (Fed. Cir. 2003).  The Federal Circuit distinguished Am. Biosci. on the facts, because the method of the putative co-inventor in that case was not used to make any of the compounds claimed in the patent at issue.  By contrast, in the present case, the method used to make the genus of compounds claimed in the '789 Patent was Falana's synthetic protocol.  The Federal Circuit agreed with the conclusion of the District Court that Falana's contribution to developing the synthetic protocol was greater than the exercise of ordinary skill in the art.

In Falana, the Federal Circuit held that an individual has contributed to the conception of a genus of chemical compounds and is an inventor of the genus when he or she (i) envisioned the structure of a novel genus and (ii) contributed the method, not already within the scope of public knowledge, of making that genus.  On the basis of this conception test, the Federal Circuit affirmed that Falana was an inventor of the '789 Patent.

From a practical perspective, Falana highlights the need to address inventorship and the distinct, but related, issue of ownership throughout the entire innovation cycle.  At the beginning of employment, individuals should sign an employee agreement that conveys intellectual property developed within the scope of employment to the employer.  When two or more companies collaborate on a project, an advance agreement should set forth the allocation of ownership of intellectual property developed.  Researchers should be educated about the standards of inventorship and the implications of acknowledging the putative contributions of third parties.  They should be encouraged to consult with patent counsel throughout the course of a project.  Such communication can help in avoiding missteps and tempering individual expectations.  The undesirable situation of having to resolve a dispute or even compete with a disgruntled individual who considers him or herself an incorrectly excluded inventor can be avoided through the early implementation of procedures to assess inventorship before patentable subject matter is perceived as being of substantial value.