In the USA, the inventors of an invention claimed in a patent must be correctly identified. See 35 U.S.C. §101, §115 and §116. Failure to correctly list the inventors can result in the patent being invalid or unenforceable, although if the mistaken inclusion or omission of an inventor occurred without deceptive intent on the part of the included or omitted inventor, the inventorship listing may be corrected by the USPTO or the court, and the patent won’t be invalid. See 35 U.S.C. §256.
Given the importance placed by the statute on correct inventorship listings, you’d think U.S. law would make it easy for a party that thinks it has been erroneously – or deliberately – omitted from a patent application to have the matter corrected, but that’s not the case. If the application is still pending, an aggrieved omitted inventor can in certain circumstances invoke an interference, a judicial proceeding conducted before the USPTO in which priority of inventorship is determined. But it’s not always possible to invoke an interference. What’s a poor omitted inventor to do?
This was the situation facing two Korean university researchers, Jong-Wan Park and Yang-Sook Chun. The two suspected that a particular chemical compound, called YC-1, inhibits the activity of a particular protein complex, HIF-1, and therefore could be used to prevent the growth of blood vessels that supply fast-growing tumors. Between 1999 and 2002, the two conducted experiments that confirmed their hypothesis. On April 7, 2003, they filed a US patent application which “disclos[ed] their anti-angiogenic, anti-cancer application of YC-1.”
As is common in university collaborations, the YC-1 used by Park and Chun was obtained from another researcher, Che-Ming Teng, who had experience in producing the compound; also as is common in such collaborations, the researchers shared their results and pre-publications with Teng. Teng, however, took those results to a Taiwanese drug company, which without Park or Chun’s knowledge filed a U.S. provisional application on March 29, 2002 and then in March 2003 filed a PCT application claiming priority from the provisional. The patent applications identified Teng and the president of the drug company as the inventors.
After learning of the filings, Park, Chun and their assignees filed suit in Los Angeles Superior Court (which eventually removed the case to Federal District Court for the Central District of California) against Teng et al., seeking among other things to have the inventorship in Teng’s pending application corrected to reflect the true inventorship. After an odyssey that included a trip up to the Supreme Court, last week the CAFC weighed in on remand, and ruled that while the question of inventorship is one that arises under the patent laws, and therefore is within the exclusive province of the federal courts, here the plaintiffs had no cause of action, because the statute only provides for a court to correct inventorship after a patent has issued. 35 U.S.C. §116, said the CAFC, does not create a private cause of action for correction of inventorship in a pending patent application. “While the question of who invented an invention disclosed in pending patent applications is a question of federal patent law, Congress, through §§ 116 and 135(a), has limited the avenues by which such inventorship can be contested”. In short, if someone else stole your invention and filed before you did, you can get your day in court – but only after the patent has already issued.
It can be argued that there’s a certain amount of sense in this arrangement: inventorship is assessed on a claim-by-claim basis, so until some claims have been granted, it’s premature for the courts to get involved in inventorship disputes (just as courts don’t issue advisory opinions). The counter to that argument is that interferences by definition involve at least one pending patent application; but then interferences are conducted by the USPTO, not the courts. What is clear is that if you’re an inventor who’s been wronged like Park and Chun, it’s frustrating to have the door to the PTO locked (unless you happened to file an application early enough to be able to invoke an interference), and to have to wait for the grant of a patent to have the issue resolved before the courts.