Correction of inventorship under 35 U.S.C. § 256 is not available without a collaborative relationship among the potential inventors, which therefore cannot be joint or substitute inventors under the requirements of 35 U.S.C. § 116 for joint invention. In these situations, an interference procedure at the PTO provides the appropriate remedy. (At least for pre-AIA applications.)
Background / Facts: The patent here relates to a method for treating Riley-Day Syndrome, the genetic cause of which had been previously unknown. Prior to filing their patent application, a first group of scientists submitted a manuscript of an article detailing their work to the editor of the American Journal of Human Genetics requesting peer review but stating that a second group of scientists were not to be involved or see the manuscript ahead of publication because they were working competitively on the same problem. For reasons unknown, the editor nevertheless sent the manuscript to the second group of scientists. By their own account, the second group of scientists read only the abstract and put the manuscript down, but filed a patent application of their own (before the first group of scientists) shortly thereafter.
Issue(s): Whether such an inadvertent exchange of ideas is sufficient to meet the “collaborative” standard for joint invention.
Holding(s): No. “[T]he independent relationship between these teams of scientists, and the nature of this communication of information, do not support joint invention in accordance with §116. … [W]hatever actions were taken after the Rubin/Anderson Abstract appeared uninvited on Dr. Gusella’s desk, ultimately the dispute is of priority of invention; that is, which team was the first to conclusively identify the operative mutations.”