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Sue L. Robinson: Inventorship Claim on Chemical Patent Rejected


A recent decision by district judge Sue L. Robinson wades into the sometimes murky waters of inventorship. In the underlying litigation, Vanderbilt sought to add several of its professors as inventors to a chemical-compound patent held by ICOS. The requisite test, however, sets a high bar. Not only must plaintiffs demonstrate inventorship by clear and convincing evidence, but they must also navigate, as defined by the Federal Circuit, the “line between actual contributions to conception and the remaining, more prosaic contributions to the inventive process that do not render the contributor a co-inventor . . . .”

According to the Court, Vanderbilt failed to show an “actual contribution,” and thus did not meet the clear and convincing standard. By doing so, the Court illustrated, at least in chemical cases, how best to draw the inventorship line:

“Ultimately, [. . . precedent] precludes the result plaintiff seeks: namely, that the contribution of a molecular scaffold in the context of one molecule . . . renders the disclosing party or parties inventors of a different family of molecules containing the same scaffold . . . . The chemical arts have frequently been characterized by the courts as ‘unpredictable.’ Minor modifications to a compound may drastically alter its properties and effectiveness; when isolated, particular portions of a molecule are likely to exhibit different chemical properties. For these reasons, the Federal Circuit has indicated that inventorship must be measured in terms of the complete chemical structure claimed as compared to its functional components, just as the validity and the scope of claims to chemical compounds are measured in terms of the complete chemical structure (and very close structural equivalents). The court declines to expand the reach of 35 U.S.C. 116 in the manner espoused by plaintiff.”

Vanderbilt University v. ICOS Corp., C.A. No. 05-506-SLR (D. Del. Jan. 27, 2009) (Robinson, J.).

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