Inventor of a Method May Also Be Inventor of Method’s Novel Compounds

January 23, 2012

Tani Chen ScD

What This Means To You

  • When considering inventorship of a new chemical compound, consider whether workers who developed synthesis methods leading to the new compound should also be considered as inventors.
  • New synthesis methods should be scrutinized to determine whether such techniques could lead to new chemical compounds.
  • Failure to properly investigate inventorship could lead to subsequent complications and litigation.

Overview

In Falana v. Kent State University, the US Court of Appeals for the Federal Circuit (Federal Circuit) ruled that under some circumstances, an inventor who develops a new method of synthesizing compounds may also be an inventor of new compounds synthesized using that method, even if the new compounds are not conceived until after the method was conceived.

Case Background

A post-doc who developed a novel chemical synthesis method sued a university where he previously worked to be added as an inventor on a later patent. The patent was directed only to chemical compounds that were synthesized using his novel method and did not claim the novel synthesis method the post-doc developed.

Even though the compounds themselves were not developed until after the post-doc left the university, the district court found that the post-doc should have been named as an inventor, and the university appealed.

Decision Analysis

On appeal, the Federal Circuit ruled that conception of a chemical compound requires both knowledge of its structure and the method of synthesizing it. If the method of synthesizing requires only ordinary skill, then a person who contributes to that method would not be an inventor of compounds produced using that method. However, if the method itself is novel and allows a new genus of compounds to be envisioned, then a person who contributes to that method may well have contributed to the conception of novel compounds produced using that method, and hence that person could be an inventor.

The Federal Circuit also cautioned that such an analysis would not extend to subsequent compounds produced after the novel method of synthesizing was disseminated to those of ordinary skill in the art, because the method would then be known to those of ordinary skill in the art.

Takeaways

To determine inventorship of a new compound, the history of the development of the compound should also be considered, including understanding the methods used to synthesize the compound. If some of the synthesis methods are novel, persons who developed such techniques could potentially also be inventors.