INTRODUCTION
University of Chicago.”0 The Chou court held that a student-assignor had standing to sue for rectification of inventorship and that the district court should use its supplemental jurisdiction to decide the student's pending state claims against the professor and the university .1 1. The district court found that the plaintiffs' misrepresentations and omissions about inventorship supported a finding of inequitable conduct.1 5 The Federal Circuit affirmed,16 holding that misrepresentations about inventorship are material.17 The patent was rendered unenforceable. "1.
RESEARCH IN ACADEMIC SCIENCE
The Ph.D.: A Means to an End
The Structure of the Academic Research Group
PATENT LAW AT UNIVERSITIES
35 The "first author" of a publication is the person whose name appears first in the list of authors. North Carolina State University, College of Engineering, Reappointment, Promotion, and Tenure Standards and Procedures, http://www.ncsu.edu/policies/.
Patent Basics
The exclusive right" was described in the patent statute as "a right to exclude" through mathematical logic. A license can be viewed as a waiver of the right to "exclude a promise made by the licensor" to the licensee not to sue [for infringement].” In exchange for the license, the licensee usually pays a royalty to the patent holder.
Inventorship and Joint Inventorship
34. Because of these simple defining principles, inventor cases are often very fact-specific and rarely provide firm guidance for resolving future disputes.”6 5. The professor can again say, “Go ahead and try.” In this case, the graduate student fulfilled the idea test, and thus a graduate student's claim to joint or sole inventorship is valid.
Preinvention Assignment Contracts
I also understand that these grants or contracts typically require the University to protect the sponsor's intellectual property rights. I understand that University policies may provide for the sharing of any income derived from inventions, discoveries, or patents that I transfer to the University pursuant to this Agreement.8 2. If the University elects not to own the invention, the default title is the government.
The university obtains title, the professor secures inventorship and the promise of royalties from potential licenses, and the government obtains a non-exclusive license.
The Present System
AUTHORSHIP AND INVENTORSHIP: TWO DISTINCT
34; are generally uneducated in the matter of inventorship (particularly as to how inventorship is differentiated from academic authorship).”9 ° The distinction between the two concepts was highlighted in In re Katz.9 1.
Highlighting the Distinction: In re Katz
Background
141 that graduate students were not co-inventors: "The other authors of the publication, Nicholas Chiorazzi and Zelig Eshhar[] were students working under the direction and supervision of the inventor, Dr. Katz, and while co-authoring the publication, are not co-inventors of the subject matter described therein."9 4. The patent examiner rejected several claims in the application as contemplated by publication under 35 U.S.C.
102(g).9 5 Having determined that "(there is) no evidence of record from which it is clear that the appellant [was] the sole inventor of the invention submitted," 96 the examiner - the statement was not impressed - stated that "[w]hen the reference is from a collection of authors, all authors must be presumed to have contributed equally [to the invention].'97 To overcome the rejection, the patent examiner requested that Katz either (1) amend his application to include post-graduate students; or (2) get graduate students to file affidavits "denying the claimed invention."98 In upholding the patent examiner's denial, the Board of Patent Appeals and Interference also cited 35 U.S.C.
The C.C.P.A. Decision
The Katz court found that the applicant had provided sufficient proof.10 The court pointed out that the examiner erred by making a presumption about inventorship: "As an initial matter, we hold that authorship of an article on itself not a pre-assumption of inventorship in relation to the subject matter disclosed in the article. Co-authors may therefore not be presumed to be co-inventors simply from the fact of co-authorship."10 5. The court stated that the Board of Patent Appeals and Interferences should have avoided speculation and accepted the statement specifically because it stated that the students "worked under the direction and supervision of appellant."°6 From this relationship "joint inventorship cannot be inferred doesn't become." °7.
Reinforcing the Traditional Academic Mindset
INVENTORSHIP CORRECTION: A REMEDY THAT SAVES
Resolution of Inventorship Disputes
Overview of the Inventorship Correction Statute . 143
The '688' Patent
150 Joany Chou & Bernard Roizman, The Terminal a Sequence of the Herpes Simplex Virus Genome Contains the promoter of a gene located in the repeated sequences of the LComponent, 57 J. Although she co-authored the publication, Joany Chou not an inventor of the subject matter disclosed therein.'5 3. The '688 application was ultimately assigned to ARCH, who subsequently granted an exclusive license of the herpes simplex technology to Aviron.'5 4 Roizman was the founder and director of , and a major shareholder in , Aviron, a company formed to exploit the subject matter of the '688 patent.1 5 5.
1 5 Chou was not yet aware of the '688 application at the time the royalty agreement was executed.' 59.
The District Court Decision
ARCH and Aviron, asserting federal and state claims.16 5 Her federal claims included, among other things, correction of inventorship of the '688 patent under 35 U.S.C. 256.166 Chou claimed that she was the sole inventor of this patent.167 Chou's independent state claims were breach of fiduciary duty, fraudulent concealment, unjust enrichment, breach of express contract, breach of implied contract, and academic theft and fraud.'1 6. Although Chou tried to argue that she was not bound by the assignment because she “never signed a contract with the university that specifically required her to turn over her inventions to the university, the district court reasoned that she continued.
In conclusion, the district court doubted that Roizman was a proper defendant in the remedy of inventory claim, as he "was not himself the owner of the patent and [had] no apparent legally protectable interest in whose name it appears as inventor ".177 .
The Federal Circuit Decision
The district court dismissed all of Chou's suspended state law claims except conversion; however, the court suggested that this allegation may not be sustainable under Illinois law.1 7 8 One of Chou's dismissed claims involved a breach of fiduciary duty.17 9 Chou based this claim on the nature of the relationship between her and Roizman, and particularly his representation of her as a "friend, faculty advisor, [and] mentor."'80 The court found that academia has "no duty to advise on the patenting of laboratory discoveries" and that the lack of a partnership between Chou and Roizman "would not allow Dr. Chou to argue that her ``reputational interest alone'' was sufficient to satisfy the requirements of Article III.'8 7 The court found this assertion "not credible" because it was assigned as an inventor in one's field is “a sign of success” and is “comparable to. Chou's royalty claim also met the existing requirements of Article III.'8 9 The district court erred in disregarding Chou's ``concrete financial interest in the patent.''9 0.
Post-Chou: A Graduate Student's Options
Harwood, for example, the district court dismissed an employee-plaintiff § 256 claim where an employer-defendant terminated the employee after the employer obtained a patent for the employee's invention.'9 3 The Federal Circuit McMurray overruled and broadened the scope of § 256. in Stark v.
The Doctrine
34; [the] concept of inequitable conduct in patent acquisition arises from the equitable doctrine of unclean hands: that a per-. son who obtains a patent by intentionally deceiving the PTO cannot obtain the patent Total Containment Inc. not enforce, the Federal Circuit said that: . The analysis of unfair conduct is carried out in two steps, consisting firstly of a determination of whether the withheld [information] meets a threshold level of materiality and intent to deceive, and secondly, a weighing of the materiality and intent in the light of all the circumstances to determine whether the applicant's conduct is so punishable that the patent must be held unenforceable. The court also stated that "intent and materiality are questions of fact" that the party alleging unfair conduct must prove by "clear and convincing evidence." ."203 An intent to deceive need. 153 cannot be proven by direct evidence; it is often shown from actions and deduced from the facts surrounding the applicant's actions.2 °4 The intent cannot be inferred from gross negligence .2 5 The court evaluates materiality in light of the PTO's disclosure duty.20 6 According to Rule 56, information is material if:.
If the court finds that both factual elements have been proven beyond a threshold standard, then "the court performs a balancing test and determines whether the scales tip to a conclusion that 'unequal treatment' has occurred."20 8.
PerSeptive Biosystems, Inc. v. Pharmacia
The District Court Cases
Polymer Laboratories and that "the named inventors misleadingly and falsely implied that Polymer Labs was only a source of raw materials."223 The court advised the omitted inventors that they could intervene, but they declined.2 2 4 The court concluded that PerSeptive failed to meet its burden of showing that the non-merger was made by mistake "without deceptive intent"; therefore, its motion to correct inventorship was denied.2 2 5 However, the court applied the wrong legal standard.2 2 6.
The Federal Circuit Decision
Now "it appears that a court may find inequitable conduct in misnaming an inventive subject matter regardless of what is actually stated in the patent issued."2 4'.
Post-PerSeptive Biosystems: A Warning Sign for
PREEMPTIVE STRIKES: RESEARCH ASSISTANTS WHO
University of West Virginia v. VanVoorhies
Patents-in-Suit
The CIP application must be submitted by the same applicant while the parent application is being processed. The board for patent appeals and interventions must decide questions about priority for the inventions and can decide questions about patentability. VanVoorhies also argued on appeal that he had no duty to turn over the '340 and '609 applications to WVU; thus, the district court's summary judgment was erroneous.28 4 Specifically, VanVoorhies argued that '340 fell outside the '970 transfer provision because the claimed invention was "independent and distinct."2 5 VanVoorhies also argued that the '970 transfer provision was inapplicable to ' 609, because “he conceived [it].
First, the CIP definition implies that parts of the new invention will be different from the first.28 7 Second, "VanVoorhies himself, a patent attorney with knowledge of patent law, suggested to WVU that the second invention be defined.
Post-VanVoorhies: The Narrow Scope of
VanVoorhies was at all times aware of the patenting and inventory decisions being made in connection with the first invention, and he participated in and consented to those decisions by co-signing the '970. Since the fiduciary duty claim against Smith was insufficient, the claim against WVU was also insufficient.28 3. The main difference between Chou and VanVoorhies is that VanVoorhies was knowledgeable about patent law and extensively involved in most of the decisions.
Therefore, as the VanVoorhies court points out, academic inventorship disputes are very specific; the outcome of the cases will depend on the relevant state legislation regarding contracts and fiduciaries, 28 9 the claimant's involvement in patent decisions 290 and the claimant's knowledge and consent to the university's patent policies.291.
The Schwartz/Mirkin Controversy
RESEARCH IN ACADEMIC SCIENCE CONCLUSION
The University is in the best position to ensure that all inventors are properly identified and listed on University-sponsored patents. First, the university is in control: it issues an intellectual property policy that students and professors must follow. Universities can address the lack of understanding by explaining the university's patent policy in detail to all interested parties before the pre-invention grant contract is signed.
This instruction can prevent future invention mistakes and also serves to protect the university in case of equita-.
