Inventorship and Entitlement
This article first appeared in The Watermark Journal Vol 24 No 2 (June 2007)
In an earlier edition of this Journal the outcome of a case concerning patent entitlement issues arising from multiple inventors and joint patentees was reported (Journal vol 23, No 2*). At that time the case (Conor Medsystems, Inc v The University of British Columbia (No. 2)  FCA 32) was on appeal to the Full Court of the Federal Court of Australia. The decision on the appeal has now been handed down.
The patents in question had been granted jointly to Angiotech Pharmaceuticals, Inc. and the University of British Columbia (UBC) who each claimed entitlement through assignment from their employee inventors. The preliminary question to be answered was whether the patents in question were liable to be revoked for lack of entitlement pursuant to s138(3)(a) of the Patents Act 1990, if the assumed facts could be established by evidence. The assumed facts were that the UBC inventors had made contributions that were not encompassed by the claims as ultimately granted.
Under s15 of the Patents Act 1990, a patent may be granted to a person: who is the inventor; who would be entitled to have the patent assigned to them; or who derives title from the inventor or person entitled. According to the statement of assumed facts, two employees of UBC were named as inventors at the PCT application stage, however, following replacement of the claims during prosecution, their contribution was no longer claimed. This removed the direct link between the UBC inventors and UBC as a mechanism for UBC to demonstrate entitlement.
In the first instance Justice Finkelstein found that the patents were liable to be revoked. Upon appeal, however, the Full Court disagreed (The University of British Columbia v Conor Medsystems, Inc  FCAFC 154). In the opinion of the Full Court, when considered in isolation, the fact that the contribution of the UBC inventors was not finally claimed was not on its own sufficient to cause revocation of the patents. UBC may have, for instance, been able to show some other act or means of entitlement, such as by partial assignment from joint patentee Angiotech. In an earlier decision, for example, it was found that collaboration between parties may result in entitlement to a patent under s15(1)(b) even in the absence of inventorship under s15(1)(a) (CSIRO v Gilbert & Hazlewood (1995) 31 IPR 67).
It was noted by the court that the whole matter could have been avoided if UBC’s entitlement had been corrected prior to grant of the patents.
The question as to the extent of the contribution required to achieve the status of an inventor was not discussed in these cases. However, a recent decision of a Delegate of the Commissioner of Patents (Bionomics Limited v McGill University  APO 6) reviewed the question of inventorship, which is critical to entitlement when collaborations between multiple parties are concerned.
The McGill patent included claims encompassing specific DNA mutations and their use in the diagnosis of epilepsy. Professor Berkovic from the University of Melbourne had made a beneficial contribution through identification, by clinical investigations, of a large multi-generational family with an unusual genetic predisposition for epilepsy. DNA samples from the family were used in genetic linkage studies which broadly located the relevant gene. Researchers at McGill then used this information to specifically identify the gene and the mutational variants associated with epilepsy.
In deciding whether Professor Berkovic’s contribution entitled him to be named as an inventor the following points were considered:
- A person must have had a material effect in benefiting the final concept of the claimed invention, even if the specific component cannot be identified. The quantum of a person’s contribution is not relevant.
- The beneficial contribution can be made at any stage in the development of the invention. A person who took an initial step leading from the problem to the ultimate solution would still be an inventor even if another person was needed to finalise the invention. This does not include a person who merely points out the state of the art.
- The concept of inventorship is fundamentally different to those of novelty and inventive step. It is a secondary issue whether a person’s contribution involves an inventive step, and it is irrelevant whether a person’s early contribution was published prior to an application for patent protection (CSIRO v Gilbert & Hazlewood supra).
- It is not necessary that joint inventors should physically work together.
- It is significant whether the invention would have occurred without the person’s involvement (Harris v CSIRO (1993) 26 IPR 469).
- A person who has merely followed instructions in performing experiments is not a co-inventor.
Professor Berkovic’s role was clearly of critical importance in the overall development of the invention even though he took no part in the gene cloning and sequencing of the mutations that were the subject of the patent claims. He was therefore found to be entitled to co-inventorship and Bionomics through assignment from Professor Berkovic to co-entitlement of the patent.
In the UBC case the contributions of the UBC employees were not ultimately claimed. A detailed analysis of their contributions would be required to decide whether they may have had a positive material effect on the invention sufficient to be named as inventors. Alternatively, the collaboration between the parties may have been sufficient for UBC to be entitled to grant of the patent even in the absence of their being named as inventors.
It becomes apparent that it is critical to review and document all inventorship and ownership claims prior to filing a patent claim. This identification of inventors must also be continually reviewed during prosecution of the patent family. If subject matter is deleted, any relevant changes to inventorship should also be made.
*Past copies of Watermark’s Journal can be found on our web site www.watermark.com.au
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