Property, intangible

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Inventing a Chemical Compound

Plaintiff Olusegun Falana was hired to work on synthesizing chemical compounds for use in liquid crystal display screens. The compounds had to perform over a range of temperatures. Falana developed a protocol for synthesizing compounds and, using the protocol, synthesized “Compound 7.” Compound 7 had a much improved temperature range, but it still wasn’t adequate. Falana then left the project and his boss synthesized “Compound 9” using Falana’s protocol, which had all the characteristics they were looking for. A patent was filed that described the synthesizing protocol in the specification, however the patent didn’t claim the protocol, it only claimed compounds. Falana was not named as an inventor, so he filed suit for correction of inventorship.

The Federal Circuit relied on the principle that conception of an invention for a chemical compound requires knowledge of both the specific chemical structure of the compound and an operative method of making it, and concluded:

Accordingly, this court holds 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. This holding does not mean that such an inventor necessarily has a right to claim inventorship of all species within that genus which are discovered in the future. Once the method of making the novel genus of compounds becomes public knowledge, it is then assimilated into the storehouse of knowledge that comprises ordinary skill in the art. Additionally, joint inventorship arises only “when collaboration or concerted effort occurs—that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts.” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004).

The Patent and Trademark Office must issue a certificate of correction correcting inventorship.

Falana v. Kent State Univ., No. 2011-1198 (Fed. Cir. Jan. 23, 2012) (nonprecedential).

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