Contribution Toward Method for Making a Chemical Compound Constitutes Conception of Invention Directed to Compound

The U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s ruling that inventorship of a patent directed to a chemical compound should be corrected to include a putative inventor who contributed to the method of making that compound.  Falana v. Kent State Univ., Case No. 11-1198 (Fed. Cir., January 23, 2012) (Linn, J.).

The plaintiff Dr. Olusegun Falana filed a lawsuit against Kent State University and the inventors named on the face of a patent directed to chemical compositions.  In the lawsuit Falana sought correction of the inventorship of the patent under 35 U.S.C. §256.  Falana alleged that he was omitted as a co-inventor of the patent based on his work leading up to the filing of the patent applications, even though he left the employ of Kent State prior to that time.

The patent claims compounds meant to improve the performance of liquid crystal displays.  The patent does not claim methods for making those compounds.  Falana developed a protocol utilized to synthesize the inventive compounds.  Based on this work, Falana alleged that he should be a named inventor on the patent.  Following a bench trial, the district court agreed with Falana and ordered the U.S. Patent and Trademark Office to issue a certificate of correction adding Falana as a named inventor.  Kent State appealed.

On appeal, Kent State did not challenge the lower court’s findings of fact, but instead only challenged the district court’s legal determination that Falana was a joint inventor.  In particular, Kent State argued that Falana’s work on a protocol to synthesize a compound is insufficient to make him a co-inventor of the patent claims because all of the claims are directed to the chemical compositions themselves, not the methods for making them.

The Federal Circuit considered the issue of whether a putative inventor who envisioned the structure of a novel chemical compound and contributed to the method of making that compound is a joint inventor of a claim covering that compound and concluded that the putative inventor was, in fact, a co-inventor.

The Court explained that the conception of a chemical compound necessarily requires knowledge of a method for making that compound.  Where the method requires more than the exercise of ordinary skill in the art, the Court stated, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself.  Accordingly, the Court reasoned that a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.