Falana v. Kent State Univ.: Determining The Inventorship Of Chemical Compounds

The U.S. Court of Appeals for the Federal Circuit recently considered what activities rise to a contribution to conception that qualify one to be a joint inventor of a chemical compound in its opinion Falana v. Kent State Univ., No. 2011-1198 (Fed. Cir. Jan. 23, 2012). The general law of inventorship is as follows. The inventors listed on a patent include all individuals who made an inventive contribution to at least one claim. That is, inventorship is determined on a claim-by-claim basis. A person who conceived the complete subject matter of any claim, including all claimed features, has made an inventive contribution. The mental act of conception is essential to inventorship. A person may devote long hours to a project, and his or her efforts may be important to its commercial success, but if these efforts do not include the conception of claimed subject matter, the person is not an inventor. For example, reducing to practice or carrying out the idea of another does not qualify one to be an inventor. A person who provides general technical information without contributing to conception is not an inventor. The collaboration of multiple individuals can complicate the determination of inventorship. There must be at least one-way communication of information relevant to conception between two people for them to be considered joint inventors - individuals who independently conceive an idea cannot be joint inventors. The facts in Falana are important to understanding the Federal Circuit's holding. As a post-doctoral researcher at Kent State, plaintiff Dr. Olusegun Falana developed a synthesis protocol for making a novel class of naphthyl-substituted TADDOL (tetraaryl-1,3-dioxolan-4,5-dimethanol) compounds of use in LCDs (liquid crystal displays). Among the compounds synthesized by Falana was Compound 7, which exhibited temperature independence over a range of -20 to +30 °C of the important high helical twisting power property. This range of temperature independence represented significant progress, but was not sufficiently broad to meet the project goals. Falana subsequently resigned from the research group. Another member of the group, Dr. Alexander Seed, then used Falana's synthesis protocol to synthesize a Compound 9 that exhibited temperature independence over a range -20 to +70 °C, meeting the goals of the project. An application was filed, later issuing as U.S. Patent Number 6,830,789 (the "'789 Patent"), which listed Seed and others, but...