who is an inventor?

WASHINGTON, D.C. 7/20/04—In Eli Lilly & Co. v. Aradigm Corp. (Fed. Cir. July 20, 2004)(Cle- venger, J.), the Court of Appeals for the Federal Cir- cuit reversed a trial court finding that a Lilly scientist should be added to Aradigm’s patent as an inventor. The CAFC found that Lilly did not pro- vide the jury with substantial evidence to sustain its position that its scientist had made a contribution to the conception of at least one of the dependent claims of the patent. The decision is reviewed be- low in this issue and included as full text in the doc- ument section. “CLEAR AND CONVINCING EVIDENCE” V. THE “PREPONDERANCE” TEST Citing Hess v. Advanced Cardiovascular Systems, Inc. (106 F.3d 976, 980 [Fed. Cir. 1997]), which cites to Garret Corp. v. United States (422 F.2d 874, 880) [Ct. Cl. 1970]), the Court followed “[t]he gen- eral rule [ ] that a party alleging misjoinder or non- joinder of inventors must meet the heavy burden of proving its case by clear and convincing evidence[.]” The concurring opinion disagrees with the necessity to reach this question: “The majority im- poses a ‘clear and convincing’ test for Lilly to show joint inventorship, asserting that a joint inventorship question is different from the priority dispute dealt with in Environ [Products, Inc. v. Furon Co., 215 F.3d 1261 [Fed. Cir. 2000]).” PRACTICE MESSAGE: BEWARE OF ADDING THAT “N”TH DEPENDENT CLAIM TO A MINOR FEATURE The practical message of Eli Lilly for claim-happy draftsmen who want to create a dependent claim for every possible feature is that if anyone has made a coinventive contribution to any claim, this provides a means to be named as a coinventor of the entire patent. In other words, had Aradigm simply relied on generic coverage without the questioned dependent claim, Lilly would have had no grounds to con- test inventorship. From a global standpoint, the case demonstrates a disparity from the laws of other countries. Only in America can one as a coinventor have the uni- lateral right to use an invention—or to license or as- sign that right to others—without the permission of the coinventors. DON’T WAIT UNTIL THE INVENTION IS MADE Another lesson for companies involved in a joint project is to put into place, before any work starts, an agreement that spells out how the ownership of any resulting invention is to be held. An amendment to the patent act that is pending in Congress would expand on this topic. * Former Director of the Intellectual Property Law Program and Professor of Law, George Washington University Law School; partner, Foley & Lardner. † Private patent practice in Media, Pennsylvania, and Editor in Chief of Biotechnology Law Report. 23 Biotechnology Law Report 563 Number 5 (October 2004) © Mary Ann Liebert, Inc. Who Is an Inventor? HAROLD C. WEGNER* AND GERRY J. ELMAN† 563

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“CLEAR AND CONVINCING EVIDENCE”V. THE “PREPONDERANCE” TEST

Citing Hess v. Advanced Cardiovascular Systems,Inc. (106 F.3d 976, 980 [Fed. Cir. 1997]), whichcites to Garret Corp. v. United States (422 F.2d 874,880) [Ct. Cl. 1970]), the Court followed “[t]he gen-eral rule [ ] that a party alleging misjoinder or non-joinder of inventors must meet the heavy burden ofproving its case by clear and convincing evi-dence[.]” The concurring opinion disagrees with thenecessity to reach this question: “The majority im-poses a ‘clear and convincing’ test for Lilly to showjoint inventorship, asserting that a joint inventorship

question is different from the priority dispute dealtwith in Environ [Products, Inc. v. Furon Co., 215F.3d 1261 [Fed. Cir. 2000]).”

PRACTICE MESSAGE: BEWARE OFADDING THAT “N”TH DEPENDENT

CLAIM TO A MINOR FEATURE

The practical message of Eli Lilly for claim-happydraftsmen who want to create a dependent claim forevery possible feature is that if anyone has made acoinventive contribution to any claim, this providesa means to be named as a coinventor of the entirepatent. In other words, had Aradigm simply reliedon generic coverage without the questioned depen-dent claim, Lilly would have had no grounds to con-test inventorship.

From a global standpoint, the case demonstratesa disparity from the laws of other countries. Onlyin America can one as a coinventor have the uni-lateral right to use an invention—or to license or as-sign that right to others—without the permission ofthe coinventors.

DON’T WAIT UNTIL THE INVENTION IS MADE

Another lesson for companies involved in a jointproject is to put into place, before any work starts,an agreement that spells out how the ownership ofany resulting invention is to be held. An amendmentto the patent act that is pending in Congress wouldexpand on this topic.

* Former Director of the Intellectual Property Law Program andProfessor of Law, George Washington University Law School;partner, Foley & Lardner.† Private patent practice in Media, Pennsylvania, and Editor inChief of Biotechnology Law Report.