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Falana vs Kent State

Jan 23, 2012
Harold C. Wegner

Joint Inventorship of One Claim equals Joint Inventorship of the Entire Patent

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Today in Falana v. Kent State University, __ F.3d __ (Fed. Cir. 2012)(Linn, J.), the court in a garden variety application of the law of joint inventorship affirmed a bench trial affirmance of the addition of plaintiff to a patent as a coinventor under 35 USC § 256.

Falana v. Kent State represents a good teaching example to the patent profession in part to show why it is important to make a claim by claim inventorship determination when drafting an application; implicitly, drafting an application with countless claims opens the door to the possibility that at least one of the claims was jointly invented by someone not named in the patent: This in turn opens the door to a defendant in an infringement lawsuit bankrolling a true coinventor of a single claim bringing a lawsuit under 35 USC § 256 to have his name added to the patent.

(1) The Goal of Gaining Coinventorship Status to Avoid the Exclusive Right of the Patent: American patent law uniquely provides that a coinventor of even one claim of a patent has the independent right to exploit any invention in any claim of the patent without permission of his coinventors; this right furthermore may be licensed or sold to a third party without permission of his coinventors and without sharing the proceeds of such divestiture with his coinventors.

(2) Coinventorship of One Claim is Coinventorship for All Patent Rights: As pointed out by the Court: “A contribution to one claim is enough.” Falana, __ F.3d at __ (quoting Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). Applying the law of Ethicon to this case, the Court stated that:

“Although the [patentees] argue that [plaintiff] did not contribute to the conception of [the commercial compound]…, this argument is inapposite. The claims … are not limited to [the commercial compound]. Instead, they claim a subset of the entire genus….. [Plaintiff] contributed to the conception of this genus….. [Plaintiff]’s lack of contribution to the discovery of [the commercial compound] itself does not negate his contribution of the method used by the other inventors to make the genus of compounds covered by the claims at issue.”

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