Pinpointing Invention Conception Date In A Patent Interference

In Dawson v. Dawson, the Federal Circuit considered an unusual case with a question that often arises in interferences: when did the inventor invent the subject matter at issue. While the decision does not break new ground in the law of conception, it highlights the issues that can arise when an inventor changes employment before an invention has been reduced to practice.

The Invention at Issue

The invention at issue relates to methods of treating eye infections using topical azalide antibiotics. Dr. Dawson worked on the invention while he was at the University of California, San Francisco ("UCSF"), but did not file a patent application directed to the invention until he was at InSite Vision Incorporated. The basic question presented by this case is whether Dr. Dawson had conceived the invention while he still was at UCSF.

Dr. Dawson was working at UCSF in the summer of 1997, when he attended "the inaugural meeting of the World Health Organization ("WHO") Alliance for the Elimination of Trachoma." As noted by the Federal Circuit, Dr. Dawson gave a presentation at the meeting "related to the topical use of an antibiotic called azithromycin to control trachoma."

According to the Federal Circuit opinion, soon after the WHO meeting, Dr. Dawson asked a colleague affiliated with UCSF, Dr. Chern, to seek the assistance of Lyle Bowman, an employee at InSite Vision Incorporated, to develop a topical ophthalmic azithromycin composition.

In late July, Dr. Chern also reached out to Dr. Leiter, another colleague affiliated with UCSF who was a pharmacist. By August 4, 1997, Dr. Leiter had prepared a 0.5% azithromycin ointment with a mineral oil and petrolatum carrier. According the Federal Circuit decision, there was no evidence that Dr. Chern had contacted Dr. Leiter at Dr. Dawson's request.

By 1998, Dr. Dawson was working at InSite. On March 31, 1999, Dr. Dawson and Dr. Bowman filed a patent application directed to "Topical Treatment or Prevention of Ocular Infections." The application named both Dawson and Bowman as joint inventors, and was assigned to InSite. The application eventually led to the two patents at issue in the interference: U.S. Patent 6,239,113 (granted May 29, 2001) and U.S. Patent 6,569,443 (granted May 27, 2003).

On May 8, 2007, UCSF filed its own patent application naming only Dr. Dawson as the inventor and claiming priority to the InSite patent applications, in order to provoke an interference with the InSite patents. According to...