September 12, 2012 Articles

Deconstructing Inventorship: A Method to the Madness

Credit for inventing a novel chemical composition requires two distinct criteria—knowledge of the chemical structure of a compound and the operative method of making it.

By Paul R. Coble and Carrie C. Ruzicka

Patent prosecutors, litigants, and fact finders in court frequently find it difficult to identify who has invented a novel chemical composition. The difficulty arises because inventorship in such cases requires "both knowledge of a specific chemical structure of the compound and an operative method of making it." Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

On January 12, 2012, in Falana v. Kent State, 669 F.3d 1349 (Fed. Cir. 2012), the U.S. Court of Appeals for the Federal Circuit sought to clarify where to draw the line expanding the pool of inventors of novel chemical compounds in at least one regard. The concept of inventorship now includes an individual who created a novel process used to make the claimed compound, even if that individual never actually made the claimed compound. While Falana is a reasonable extrapolation of well-settled inventorship law for chemical compounds, the decision will require increased scrutiny of inventorship during both prosecution and enforcement of claims in the chemical arts.

In Falana v. Kent State, Dr. Olusegun Falana sued Kent State University, Kent Displays Inc. (KDI), and the inventors named in U.S. Patent No. 6,830,789 (the '789 patent), requesting that he be added under 35 U.S.C. § 256 as an inventor to the '789 patent. KDI and Kent State own the '789 patent, and KDI is a spin-off technology company from Kent State that designs and manufacturers liquid crystal displays (LCDs) used in electronic devices. The three named inventors were Joseph Doane, Asad Khan, and Alexander Seed. After Falana filed suit, he dismissed KDI, Doane, and Khan when they each filed statements with the district court, stating they had no disagreement with the addition of Falana as an inventor to the '789 patent. Kent State and Seed (collectively Kent State) remained as defendants.

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