Ono moves US Supreme Court against Fed. Cir. decision questioning the level of contribution for joint inventorship

Ono moves US Supreme Court against Fed. Cir. decision questioning the level of contribution for joint inventorship

Ono moves to US Supreme Court against the decision of the Federal Circuit affirming that the contribution being made by the Dana Farber scientists will count towards joint inventorship making Dana the co-owner of the work solely contended by Ono.

This case provides an example of how much contribution is required to be the Joint inventorship. Some of the contribution made by Dana Farber was published and made part of the prior art before the complete conception of the invention as claimed. While affirming it to be towards the Joint Inventorship, Federal Circuit held, "[A] collaborative enterprise is not negated by a joint inventor disclosing ideas less than the total invention to others, especially when, as here, the collaborators had worked together for around one year before the disclosure, and the disclosure occurred just a few weeks prior to conception.

The decision has resulted in Dana Faber becoming the co-owner of the work on which it claims to be the sole owner. Moving to US Supreme Court, Ono puts up the question:

• [35 USC 116] provides that "when an invention is made by two or more persons jointly, they shall apply for a patent jointly." A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256.

• The Federal Circuit has held that "to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention." Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997).

• In this case, in conflict with this Court's guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception.

The question presented is:

Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are "not probative" of whether those alleged contributions were significant to conception.

It will be interesting to see how the Supreme Court will delve into these issues and what will be the parameter to decide the level of contribution included as joint inventorship.