Falana vs Kent State

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

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.”

About Harold Wegner (755 Articles)

HAROLD C. WEGNER

Partner

Foley & Lardner LLP

202.672.5571
hwegner@foley.com

Harold C. Wegner is a partner in the international law firm of Foley & Lardner LLP, where he is actively engaged in cutting edge domestic and international patent issues. Domestically, Prof. Wegner focuses upon appellate patent issues as well as reexamination and other complex matters at the U.S. Patent and Trademark Office. Globally, Prof. Wegner crafts strategies for multinational and particularly Chinese and Japanese patent enforcement and management.

Prof. Wegner is the former director of the Intellectual Property Law Program at the George Washington University Law School, where he had been a professor of law; he continues his affiliation with George Washington as member of the Dean’s Advisory Board. He has been a visiting professor at Tokyo University and spent several years as a Mitarbeiter at the Max Planck Institute for Intellectual Property Law in Munich followed by service as a Kenshuin at the Kyoto University Law Faculty.

Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). He started his career as a patent examiner. In 1980 he founded his own law firm; in 1994 he merged his practice into the Foley firm.