A “preliminary” statement about a “possibility” or “potential use,” alongside a recommendation for continued work and a “report back” in the future, falls short of a “‘definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.’” This can be important not only when considering inventorship, but also for establishing priority. For example, when submitting inventor disclosure materials directly to the PTO (e.g., as a provisional), it is important to make sure that the information is presented in a way that does not leave any doubt as to whether the invention is definite and permanent. Inventors often describe their work as “proposals” (e.g., “we propose to …”) which can open up the priority claim to attack down the road for lack of written description, etc. These indefinite characterizations should be avoided.
Background / Facts: The invention at issue in this case aims to overcome difficulties associated with treating eye infections through a process for topically applying an azalide antibiotic to the eye. Dr. Dawson, in trying to develop such a treatment but lacking experience in preparing ophthalmic medication formulations, enlisted the help of Dr. Bowman in creating a suitable ophthalmic medication with azithromycin that could be applied topically to the eye. The two then filed a patent application on the resultant treatment methodology, assigning their rights to Dr. Bowman’s company InSight. Dr. Dawson’s university UCSF was not pleased, however, and filed its own patent application that named Dr. Dawson as the sole inventor and generally copied the specification and claims from the InSight patent to provoke an interference.
Issue(s): Whether UCSF as the junior party to the interference successfully proved sole conception by Dr. Dawson prior to his collaboration with Dr. Bowman.
Holding(s): No. As the court noted, the evidence presented in this case was unusual because of Dr. Dawson’s refusal to cooperate with UCSF’s later patenting attempts. “We are asked to decide whether and when an invention formed definitely, permanently, and particularly in the mind of the alleged inventor, but to do so without any testimony from the supposed inventor himself. Instead, UCSF has focused its proof on what normally serves as corroborating evidence – i.e., contemporaneous disclosures of the alleged conception.” Based on the documentary evidence alone, the court found that UCSF had established, at best, that Dr. Dawson had “announce[d] a general idea, acknowledge[d] many of the difficulties associated with making that idea operative, and offer[ed] some thoughts on how one might proceed (including by listing a few potential delivery vehicles).” A “preliminary” statement about a “possibility” or “potential use,” alongside a recommendation for continued work and a “report back” in the future, however, falls short of a “‘definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.’” it was only after Dr. Bowman became involved that a definite and permanent invention evolved, leading to the original joint patent application.