IPR in Biotechnology (BTX-402)

B.Tech Biotechnology (4th year)

Course coordinator:
Harmanpreet Meehnian
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Topic: Collaborative research

 Introduction
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 Very few inventions arise from a single researcher working in isolation.
Most inventions, particularly in complex and expensive areas of research,
involve at least some type of collaboration or interchange among people.

 The collaborative nature of research raises questions of who the

inventors are for a particular invention and, sometimes, what prior art is
applied when deciding whether the invention is nonobvious.

 Issues such as these, which typically arise in the context of collaborative

research, are discussed in this chapter.
 Inventorship Issues In Collaborative
Research
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 When inventions are the product of collaborative research, the question

becomes who among the collaborative team is the inventor.
 The issue is a constant source of confusion and has generated
considerable legal commentary. It can present serious problems for the
patent owner who may ultimately seek to enforce the patent.
 Inventorship determinations should be made carefully, based on an
understanding of the potential ramifications if the intellectual property that
develops from a collaborative research project is to receive thorough and
effective patent protection.
I. Identifying the Inventors
II. Derivation of Invention
III. Joint Patent Applications and Joint Inventions Compared
 Identifying the Inventors
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 One who suggests a desired goal is not necessarily an inventor.
Case study: Amgen vs Genetics Institute

 Someone who merely carries out the reduction to practice is not

necessarily an inventor

 Someone who provides background information is not necessarily an

inventor.

 The coauthor of a paper reporting an invention is not necessarily an

inventor.
case study: Katz’s case

 An inventor contributes to the conception of the invention as claimed

 Derivation of Invention
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 Derivation is the taking of an invention from the true original inventor
by another.

 Applegate v. Scherer case study.

 To illustrating the substantive law of conception, the difficult standard

of proof that must be met by someone who charges derivation of invention.

I. Avoiding a Charge of Derivation Through Recordkeeping.

II. The Difficulty of Proving Derivation.

Ash Corp. v. United States (bureau of mines)

 Joint Patent Applications and Joint
Inventions Compared

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 Joint patent applications and joint inventions are completely different
things. A patent might name multiple inventors without containing a single
joint invention.

 Inventors may apply for a patent jointly even though

(1) They did not physically work together or at the same time,
(2) Each did not make the same type or amount of contribution,
(3) Each did not make a contribution to the subject matter of every claim of
the patent

 The first two clauses of this section simply restate the law of joint invention.
The third clause makes a completely different point—that inventorship in a
patent application can differ from claim to claim. Thus, as already noted,
inventorship in a patent application is based on claims and is determined on a
claim-by-claim basis.
 Correcting Inventorship
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 Honest mistakes can be made in identifying the correct inventors on a
patent application. Sometimes mistakes in identifying inventors, such as
naming the wrong sole inventor, can be corrected.

 Corrections can be made with pending applications or issued patents. The

following section briefly discusses each situation.

I. Correcting Inventorship in a Patent Application

II. Correcting Inventorship in an Issued Patent
 Prior Art Issues In Collaborative Research
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 When potential inventors are in different organizations, proper
determination of inventorship may be crucial to determining whether an
invention is patentable under U.S. law.

 The following section discusses these issues.

I. Prior Art Issues Under United States Law

II. Prior Art Issues Under the European Patent Convention
Thanks

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