Publication Does Not Necessarily Defeat Joint Inventorship

DANA-FARBER CANCER INSTITUTE v. ONO PHARMACEUTICAL CO., LTD.

Before Newman, Lourie, and Stoll.  Appeal from the U.S. District Court for the District of Massachusetts

Summary: An individual who contributes “significant building blocks” to an invention may still be an inventor even if the individual publishes the information prior to conception of the claimed subject matter.

Dana-Farber Cancer Institute brought suit against Ono alleging that Dr. Freeman and Dr. Wood should be added as inventors to an Ono patent naming Dr. Honjo as the inventor.  Over the years, Freeman, Wood, and Honjo had met and exchanged information relevant to the subject matter of the patent.  However, Freeman and Wood did not participate in certain experiments leading to conception.  Freeman and Wood had also separately published information relating to their research and filed a provisional patent application that did not list Honjo as an inventor.  Nevertheless, the district court concluded that Freeman and Wood should be added as inventors.  Ono appealed.

Ono argued the contributions of Freeman and Wood (1) were irrelevant because they published their work prior to conception, and (2) were not a significant contribution to the claims.  The Federal Circuit rejected Ono’s first argument because “publication of a portion of a complex invention does not necessarily defeat joint inventorship of that invention.”  The Federal Circuit rejected Ono’s second argument because the contributions of Freeman and Wood were “significant building blocks” upon which the patents were built.  Thus, the Federal Circuit affirmed.

Editor: Paul Stewart