Volume 11, Issue
1, April 2014

 

Moshood
Agbolade Abdussalam
*

Cite as: M Abdussalam, “Identifying ‘the invention’ in Inventorship Disputes”, (2014) 11:1 SCRIPTed 38 http://script-ed.org/?p=1413

 

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DOI:
10.2966/scrip.110114.38


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Agbolade Abdussalam 2014.
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Introduction

This
article hinges on the issue of entitlement to patents through inventorship
under UK patent law and also seeks to incorporate a comparative analysis of
American law on the same subject. It seeks to discuss the equitable standard
for determining what the “invention” is in inventorship disputes. In the UK
(and other conventional patent regimes) it is the devising of an invention
through innovative processes or means that gives rise to a patent claim.[1] It is
pertinent, therefore, to note that although there might be other means
such as by law and equity through which entitlement to patents
may be secured, the primary source of obtaining a patent is through an inventorship
claim.[2]
As a result it is necessary to have proper measures for ascertaining who true
inventors are.[3]

Given
the complexities of modern technologies and the corresponding high degrees of
specialisation in science and technology fields collaborative engagements have
become the norm in the inventive processes.[4]
Accordingly, the question of “who supplied the inventive concept behind the
invention?” now arises with greater frequency.[5]
This is not merely an academic consideration: the strong connection between
inventorship and ownership means that this issue could affect the exploitation
of a patent.

Where
there has been joint efforts towards an inventive end and a dispute arises
thereafter in relation to inventorship, three questions will usually arise: a)
What is the invention?; b) Who contributed to the invention?; and c) Was there joint
conception?[6]
As noted, this article focuses specifically on the first of these: the
identification of “an invention” as the subject-matter of inventorship
disputes.

As
collaboration increases ascertaining inventorship

or in other words determining the source of an invention, is by no means a
simple matter

and in fact this area has seen a surge in litigious attention. In the American
case of Mueller Brass co. v Reading Industries Inc.[7]
the court lamented the intricacies of ascertaining inventorship in joint
collaborations, describing it as “one of
the muddiest concepts in the muddy metaphysics of the patent law”. In the UK case of IDA Ltd and others v University of
Southampton and others
[8] Lord Justice Jacob acknowledged the
upsurge in inventorship litigation, saying:

Finally, we were told that in very
recent years there has been (and are) a rash of entitlement cases before the
Comptroller. No-one really knew why this jurisdiction (which in my time at the
Bar was moribund) has recently come alive. There was some speculation about an
increase in joint ventures, or an increase in the appreciation of the
significance of patents. None of them really explain it…[9]

 

            What
is meant by “invention” for the purposes of inventorship

is not settled in the UK
. The meaning of this
concept is still a matter of competition between the inventive concept of the
claims and specification.[10]
 An understanding of the functional differences
between the claims and the specification is beneficial in highlighting this
competition between the claims and specification.[11] The
provisions of s 14 of the UK Patent Act describe the functions of the
specification and claims. Section 14(3) describes the specification as that
which shall ‘disclose the invention in a manner which is clear enough and
complete enough for the invention to be performed by a person skilled in the
art’. Section 14(5) describes the claim(s) as defining the matter for
which protection is sought, in clear and concise language, supported by the
specification and relating to an invention or to a group of inventions which
are so linked as to form a single inventive concept. The essence of discussing
the relationship between the specification and claims is simply to show the
functional differences between both, with the ultimate intent of pointing out
which of the two should be considered the ‘invention’ in entitlement contexts.

This
article argues that the statutory vacillation of the term ‘invention’ between
the claims and specification need not create difficulties if that competition
were given a context-specific settlement.
 Such
a
context-based approach, as argued in this article,
should be settled in favour of the specification due to nature of the
relationship between the specification and claims. More specifically, the
collection of embodiments disclosed in the specification both preludes and
forms the origin of the claims.[12]
Additionally, the specification provides the yardstick for measuring the extent
of protection deserved by the claims. It also serves as a source of claim
interpretation and it bears a greater likelihood of stability across the patent
lifecycle than claims.

Beyond
these functional differences, there are also ‘efficiency’[13]
reasons for the choice of specification over the claims. Such an approach would
aid both the avoidance of fragmented ownership interests in a granted patent
and with the prevention of a specious assumption of an inventor’s status. While
judging inventorship through the periscope of the specification would lead to a
result of either common/joint ownership or nothing the alternative, judging by
the claims, is more likely to create a situation of fragmented ownership
instead. This is because in light of the fact that the UK Patent Act 1977 does
not have provisions enabling joint ownership of a patent in circumstances where
a party has contributed to only a claim. Therefore a claim-by-claim approach
could place ownership along the lines of disparately owned claims, thus
creating room for a morass of complex ownership situations. For example, a
patent may be solely owned by A, but a claim in that patent may be jointly
owned by A and B; or a patent might be jointly awarded to A and B, but rights
to exploit that patent could be divided between A and B on the basis of the
claims differently attributably them. This however is in contrast to the US
position. This is because the provisions of s 116 of the US Patent Act allow a
party who has significantly contributed to even just one claim to count as an
inventor. Finally, an approach adjudging inventorship from the standpoint of
the specification would also forestall issues of spurious inventorship, something
which the claim-by-claims approach is susceptible to.

1.      Relationship
between inventorship and ownership in UK Patent law

 

It is arguably natural that the deviser
of an inventive concept should be the owner of the patents granted on such an
invention.[14]
Indeed, that deviser[15]
is the object of the patent system’s reward philosophy.[16]
Chandra corroborates this position, noting that:

Bodily or mental powers
require an implementation to act through and a material to act upon in order to
create something. The thing that is created becomes the property of the person
who has mixed his labour, powers or talents with it. Thinking about property,
therefore, has been informed by considerations of the origin of the material.
The creator was seen to be the legitimate holder of that property.
Right-holding is thus linked to ownership, with a proprietary control over the
domain specified as the object of the right.[17]

 

This
postulation is supported by s 7(2)(a) of the UK Patent Act 1977, the
interpretation of which was considered in Rhone Poulenc Rorer v Yeda Ltd[18].
In this case the UK House of Lords, overruled Markem v Zipher[19], a
decision of the Court of Appeal where Jacob LJ had previously held that
inventorship itself could not be the basis for a claim to entitlement. In the
House of Lords, Lord Hoffmann expounded on the interpretation of s 7(2)(a) and
stated that:

 

In saying that the patent may be granted
primarily to the inventor, section 7(2) emphasises that a patent may be granted
only to the inventor or someone claiming through him. The claim through an
inventor may be made under one of the rules mentioned in paragraph (b), by
which someone may be entitled to patent an invention which has been made by
someone else (the right of an employer under section 39 is the most obvious
example) or the claim may be made under paragraph (c) as successor in title to
an inventor or to someone entitled under paragraph (b)

 

 …[T]he first step in any dispute over
entitlement must be to decide who was the inventor or inventors of the claimed
invention. Only when that question has been decided can one consider whether
someone else may be entitled under paragraphs (b) or (c).[20]

 

In
essence, Lord Hoffmann interpreted s 7(2) as meaning that the inventor is the
primary grantee of the patent, being the chief object of the patent system.
However, other persons may be entitled for legal reasons
such as by virtue of contract,
employment obligations, succession or equity

to dispossess the inventor of that entitlement or to derive it from the
inventor. Similarly, Seymour holds that the question of inventorship takes
primary position in entitlement contests as he argues that the interests which
any person might hold over a patent are only derived by reason of a connection
with the original inventor.[21]

 

 

2.      Subject-matter
of inventorship disputes
  

When a court is seized with an
inventorship dispute, the primary concern of the court is to ascertain who the
inventor is. As stated in the Australian case of Row Weeder Pty Ltd v
Nielsen
,[22]
any determination of a question predicated on inventorship can only be rightly
disposed of by ascertaining what person(s) have supplied contributions that
have had material effect on the final conception of the invention in issue.
Thus in the UK case of University of Southampton Application[23]
Laddie J ruled that a question bordering on inventorship involves: (a)
identifying the inventive concept(s) underlying the invention; and (b)
identifying who came up with the inventive step(s) contained in the invention.[24]

It is the first of these questions that
is the central focus of this paper: What exactly is the invention? It should be
borne in mind that in order to determine what the invention is the inventive
concepts underlying the invention should first be ascertained. The question of
what the invention is spurs much debate, with some arguing that the invention
is the sum of inventive concepts contained in the specification[25],
while others holding that it is the patent claims that constitute the invention.[26]
Janicke avers that the meaning of the ‘term’ invention is protean and flexible,
depending upon the legal considerations at hand.[27] The
varying meaning of ‘invention’ in the UK is recognised at s 125(1) of the 1977
Act, which states that:

…. (A)n invention for a patent for which
an application has been made or for which a patent has been granted shall, unless
the context otherwise requires
, be taken to be that specified in a claim of
the specification of the application or patent, as the case may be, as
interpreted by the description and any drawings contained in that
specification, and the extent of the protection conferred by a patent or
application for a patent shall be determined accordingly [emphasis added]

 

This reflects the fact that the meaning
of ‘invention’ will depend on the context at hand. Contexts for this purpose
could range from infringement, validity, entitlement, to actual conception.[28] Thus,
for example, when in general patent law parlance we talk of the infringement of
an invention our minds jump immediately to the patent claims, as it is these
claims that earmark the patentee’s monopoly.[29]
Also, it is through patent claims that we determine the validity of patents in
terms of novelty, inventiveness, sufficiency/enablement and industrial
applicability.[30]

For
example, on the question of inventive step in Conor v Angiotech[31] Lord
Hoffmann said that: “the invention is the product specified in a claim, and
the patentee is entitled to have the question of obviousness determined by
reference to his claim and not to some vague paraphrase based upon the extent
of his disclosure in the description”.
[32]
However, when it comes to issues bordering on the conception of an idea which
forms the basis of a patent application it is submitted by Vivien Irish that,
the disclosure document or specification is what should be considered.[33] This
is because the specification provides an insight into the background of the
invention. But what is unclear is what ‘invention’ means in entitlement
circumstances? This is the question which this article attempts to grapple
with, and it will be suggested – in line with the view of Vivien Irish – that
the specification should be the subject for consideration in this context.

 

3.1
      Shifting meaning of ‘Invention’ in inventorship disputes in the UK

 

As can be deduced from Lord Hoffmann’s
quotation above, taken from his judgment in Rhone Poulenc Rorer, any
determination of the ‘invention’ in entitlement contexts also affects the
proprietary rights in a patent.[34]
If the invention is determined upon the basis of the patent claim then only
those persons who have made a technical contribution to its conception are
inventors. Accordingly this means that where there is a multitude of claims and
varying entities partook in conceiving each claim, inventorship and thus
entitlement, will be determined on the basis of each claim and contributions
thereto. This will inevitably result in fragmented ownership of the patent.

Where however the patent specification
or disclosure is the starting point for determining inventorship, material
contribution to the conception of the general technical idea contained in the
specification is sufficient to earn the status of sole inventor or of
co-inventor, and put one at the threshold of entitlement. This hinges on the
principle that qualifying as an inventor requires one to have materially
influenced the conception of the inventive concept.[35]

As
pointed out by Lord Justice Jacob,[36]
litigation founded on inventorship disputes is only a relatively recent occurrence
in the UK patent system.  The body of case law on this aspect of patent law is,
therefore, somewhat new and evolving. Notwithstanding this, there have been
some relevant decisions which have touched on inventorship, and in particular
upon the question of what an invention is in the context of entitlement. There
are two cases in particular that are at the forefront in the evolution of this
aspect of law [37]:
Viziball Ltd’s Application[38]
and Norris Patent Application.[39]
Tibor is of the view that the approaches used in these cases are same,[40] but
it is argued here that they are in fact different.

 

The
first of these cases, Viziball Ltd’s Application, involved two erstwhile
friends Godin and Christie. Godin had furnished the technical idea of ‘flexible
retro-reflectors’ while Christie has supplied the idea of ‘recesses’. These
concepts where applied to fast moving balls or projectiles to improve their visibility
on television or video recording. In their approach to the dispute the courts
considered the invention(s) to be that set out in the patent claims, and therefore
that inventorship could only be based on contributing to the conception of
claims. The court (just as the Hearing Officer had at the Patent Office had
done) set out first to identify the inventive concepts[41] 
lying at the heart of the specification and, upon determining this, went on to
consider each claim in turn seeking to find what party’s inventive concept had
been material to the conception of that particular claim. It was upon this
basis that inventorship was attributed between the litigants. The court held
that claims which bore both technical contributions were to be jointly owned, but
claims which were founded on the distinct technical contributions were to be
singularly owned by its devisor. This is the claim-by-claim approach.[42]

 

In
Norris’s Patent, however, the Court took a different approach
from Viziball. In this case, the patent in issue related to a device for
the automatic determination of the refractive index of a sample fluid. Two
cardinal technical aspects (i.e the optical and control aspects) were
encompassed in the overall inventive concept disclosed in the specification. It
was found that N had solely conceived the optical aspect, while G had made the
control aspect in collaboration with N. The court (affirming the decision of
the Hearing Officer) took the view that patent rights arise not just from
granted applications but also ‘yet-to-be-granted’ applications too. Therefore
the patent specification or disclosure ought to be the starting point of
inventorship in entitlement contests, not the claims. The court thus looked
into the specification’s technical contents to determine joint inventorship.
Although it was acknowledged that the control aspect of the invention was the
only contribution which G had partaken in, the court found both G and N to be
the co-inventors of the patent as a whole.
The
court embraced the position that the specification be considered in its entirety,
rather than apportioning entitlement on the claim-by-claim basis.[43]

 

Further cases have continued to grapple
with these divergent approaches. In Henry Bros v Ministry of Defence[44]  the
Court of Appeal agreed with the High Court that the ‘invention’ for entitlement
purposes was the core inventive concept disclosed in the specification, 
refusing to consider each claim as an invention; a position identical to that
adopted in Norris. In Minnesota Mining Manufacturing and Co’s
International Patent Application
[45]
the Hearing Officer tried to find a reconciliation for the disparate
‘claim-by-claim’ and ‘holistic/specification’ approaches by holding that where
the application was yet to be granted and an inventorship contest arose, the
specification could best be used to adjudge inventorship but that where the
patent application was granted and the claims successfully issued, the claims
were to be the ‘bone of contention’. The hearing officer said:

On this point and as Norris recognised,
I am not forgetting the fact that entitlement proceedings may be launched
before there are any claims. However, it is noteworthy that in all three cases,
Norris, Viziball and Henry Brothers, the judges and hearing
officers involved did in fact turn to the claims to help them identify the
inventive concept. The conclusion I draw from this is what where claims exist,
it is quite permissible to use them as an aid to identifying the inventive
concept. If there were no claims, of course, one would have to identify the
inventive concept from whatever material was available.[46]

 

The
Hearing Officer allowed the application to proceed in the joint names of the
disputing putative inventors, but apportioned entitlement to the patent on
claim-by-claim basis.[47]
Upon gleaning what the inventive concepts of the claims were the sources of inventive
concepts were ascertained, and on that basis entitlement to the patent was
apportioned.

 

Collag
v Merck
[48]
followed Henry Bros. It avoided
using the claims alone as the basis for attributing ownership, instead
extrapolating the inventive concepts from the specification as a whole. In Stalenco
Fibre Optics v Bioprogress Tech. Ltd,
[49]
however the court took into account Henry Bros’ ‘holistic/specification’
approach but adopted the claim-by-claim approach due to the fact that the
disputing parties had opted for this as the basis for adjudication of the
dispute.[50]
Further to this came the first instance decision of Judge Fysh in Markem v
Zipher,
[51]
where it was decided that (as though regurgitating Minnesota Mining and
Manufacuring[52]
)
where an application had only been filed and claims were not yet advanced it
was right to look at the specification, but where the claims had been advance
then the claims were to be considered the invention(s). The Court stated that:

 

(a) In the case of the granted patents, a
fortiori
when one which has undergone narrowing during prosecution, this is
not difficult. I have therefore construed the relevant claims in the usual way.
Having done so, I have gone on to inquire whether so construed they cover what
as a matter of evidence was clearly devised by the claimant at an earlier time.
If that yields an affirmative answer and there is requisite causation (see
below), prima facie the invention subject of the claim belongs to the
referrer.[53]

 

Judge
Fysh, before making this statement, had traced the evolution of the case law on
this aspect of patent law. He acknowledged the prevailing position
in which the ‘holistic/specification’
approach appears to prevail over the ‘claim-by-claim’ approach
but preferred the latter in on the
basis of the facts of the case before him.[54]
This is largely because he was convinced, as the facts of the case appeared to
him, that the defendants had purloined the inventive concepts of the plaintiff
(an ex-employer) which had been kept with them in form of confidential
information. Therefore, as the judge considered, justice could best be served
if the court was not to be carried away by the specification or disclosure
details. The court had to simply look into each claim to see which of them bore
the inventive ideas of the plaintiff.

 

On
appeal Lord Justice Jacob, with whom Lord Justices Kennedy and Mummery agreed,
restated the primacy of the ‘holistic’ approach. He distinguished the claims
from specification on a functional basis. He emphasized that the claims were
only to identify the extent of monopoly the inventor is entitled to. The
specification however was to disclose (and enable) the invention upon which
claims would be founded. Therefore the determination of inventorship should, in
Jacob LJ’s view, proceed on the basis of contribution to the chief technical
contents of the specification.[55]
He built his reasoning upon s 14(5) (d), modelled after Article 82 of
the European Patent Convention (EPC), which requires that claims must be so
linked as to form one inventive concept;[56]
consequently the term ‘invention’ at application stage cannot be concerned with
claims. So too must it be in relation to entitlement questions in all cases,
Jacob LJ reasoned, for inventorship questions are concerned with an inquiry
into what persons furnished the heart of the invention. He said:

 

What
one is normally looking for is “the heart” of the invention. There may be more
than one “heart” but each claim is not to be considered as a separate “heart”
on its own. That is consistent with the view of Laddie J. in University of
Southampton’s Applications
[2005] R.P.C. 11.[57]

 

Jacob
LJ consolidated this position further in IDA Ltd v Southampton University.[58] Furthermore,
in Welland Medical Ltd v Philip Arthur Hadley[59] the
‘holistic’ approach was recently confirmed as the prevailing rule in assessing
the subject-matter. 

 

The
matter is, however, not so simply settled. The case of Statoil v Southampton[60]
brings the complexity inherent in the ‘holistic’ approach to the fore.[61] While
Jacob LJ talked about there being one ‘singular or general inventive concept’
in patent applications

drawing analogy from the Greek fable of the Hedgehog with one broad trick and
the fox with multifarious flimsy tricks[62]
Statoil (although accepting the
‘holistic’ approach) explains that there might be situations where there is a
plurality or multiplicity of inventive concepts in the specification. This is
one point which Jacob LJ did not address squarely in his judgements, which
emphasised the ‘holistic’ element primarily. Mr Hayword as Hearing Officer
said:

 

This is point has not been clearly
addressed in any of the recent authorities. There is a hint at it in paragraph
25 of Stalenco that in this respect granted patents are different from
patent applications, but it is not clearly stated and would in any case be obiter.
It seems to me that whilst section 14(5)(d) requires there to be an inventive
concept that links all the claims, it doesn’t exclude the possibility of other
inventive concepts being present. Accordingly, and in the absence of clear
authority to the contrary, I am not going to rule out the possibility that
there could, for inventorship and entitlement purposes, be more than one
concept or “heart” in a granted patent. Equally, it is clear I should not be
scouring the specification looking for inventive concepts in every nook and
cranny
?[63][Emphasis
added]

 

He
ends with the position that, in such situations, the claims should be consulted
to elicit the precise nature of the inventive concept. This seems on the
surface a plausible approach to take situations where the inventive concepts
are plural and may or may not link to form one singular inventive concept,
especially in light of the fact that s 26 of the UK Patents Act 1977 shields
such invention(s) from being impugned in any proceeding once it has been
granted.

 

 

3.      Avoiding
the ‘claim-by-claim’ quagmire

It
is, however, the argument of this article that any approach based upon the
consideration of the claims should be avoided in its entirety, irrespective of
situations in which there may be multiple inventive concepts. The unsuitability
of the ‘claim-by-claim’ approach to the UK’s circumstances therefore forms the
next topic of discussion. It is important in this regard to demonstrate the
demerits in the claim-by-claim approach in a manner which builds upon and goes beyond
Jacob LJ’s reasoning.

 

In
this regard practice in the USA offers a valuable point of comparison, as the
USA has an age-long established ‘claims-centric’ Patent system.[64] The
American patent jurisprudence is arguably the most engaged and exploited in the
world of today, judging by the preponderance of patent litigation.[65]
However while there is much that can be learnt from the US position, such
lessons must be sieved with caution. This is particularly the case with respect
to inventorship. The American patent jurisprudence places a high premium on the
claims in inventorship and entitlement matters, principally because the claims
are considered to form the epicentre of granted patents and thus are taken to represent the ‘invention’.[66]
Contributing to just one claim is enough to qualify as a co-inventor in the
USA.[67] 

 

This
article argues that for three fundamental reasons it would be necessary for the
UK to avoid this approach. One is reason, which is developed below, is that it
would not be in sync with the universal spirit of patent law philosophy with
regard to the functional relationship between the specification and claims. The
second is that the provisions of the UK Patents Act 1977 do not acknowledge the
claim-by-claim approach, nor is there legal precedence to support it. Adopting
it therefore, it is submitted, will allow a propensity for a fragmentation of
ownership over a granted patent. The third is that will create opportunities
for false inventorship assertions. Each reason will now be expounded upon in
turn.

 

4.1
The relationship between the specification and claims.

   

Four
arguments can be advanced towards drawing this distinction between patent
claims and specification on the basis of the functional relationships between
both; these arguments are however connected. They are as follows:

 

1)      that
the specification, being a compendium of the inventor’s disclosure, serves as
the quid pro quo for patent protection,

2)     
that
the specification functions as the touchstone of proportionality between the
disclosure made by the inventors and the scope of legal monopoly sought through
patents,

3)     
that
the specification provides a background to understanding the inventor’s invention
as expressed in the claims, and

4)      that
the specification has more stability, than the claims, across lifecycle of the
patent.

 

A
juxtaposition of the claims vis-à-vis the specification when it comes to each
of these four arguments will be of assistance.

 

The
first argument concerns the disclosure on the basis of which patent protection
is granted. It cannot be overemphasised that the quid pro quo of a
patent grant is the disclosure of an invention[68],
in such a manner that it can be reproduced.[69]
The disclosure contains the new technical teaching which the inventor has
furnished any given technical field with; it enables the dissemination of
information about the invention.[70]
The disclosure of this technical teaching is contained in the patent
specification. In the recent American decision of
Arlington
Industries, Inc v Bridgeport Fittings, Inc,
[71]
Justice Lourie (after considering the specification
as the ‘heart’ of the patent) went on to say:

 

But, at bottom, we are reading a patent
specification to see what the inventors invented, what they disclosed, and how
they conveyed that information. A patent is a teaching document. In almost all
cases, the inventors, and their patent solicitors, knew what was invented and
generally disclosed their invention in competent language.[72]

 

Fromer,
in making a case for the centrality of the specification, argues that the
teaching essence of the specification can be perceived from the audience it is
addressed to.[73]
The specification is addressed to technicians who intend to put the invention
into effect in any fashion, while that the claims on the other hand are
addressed to legal persons who are concerned with the extent of monopoly
entitled to the inventor[74].
There is corroboration for this position from Giles Rich,[75] as he
said on another occasion that:

 

What the inventor regards as his
invention has very little, if anything, to do with most claims. Claims are
drafted by attorneys and agents. Their wording ultimately must satisfy patent
office examiners that they distinguish, distinctly and with particularity, from
all prior art known to them…It is the claims that have determined what
infringes the patentee’s right to exclude, construed in the light of the
specification…[T]he claims are the measure of the patentee’s right to exclude
rather than the measure of what was invented.[76]

 

Liivak
is of the view that the true “invention” is that which is embodied in the
specification; explaining further that these embodiments put together bear the
requirements of patentability which are abstracted or modified into what is
called ‘claims’.[77]
This point further addressed below. The specification covers the technical
field to which the invention relates, the background art, a statement of the
invention, its advantages and detailed drawings or instructions on how to put
the invention into practice.[78]
The specification serves as a compendium of the invention showing that the
technical teaching for which legal monopoly is sought is in the inventor’s
possession.[79]
This
is why
Jacob
LJ succinctly calls the inventive concepts disclosed in the specification the
‘Eureka moments’,[80]
simply because they predate those in the claims.

 

Akin
to Jacob LJ’s view is that of Cotropia. Cotropia explains that an invention
could be perceived from two perspectives: the ‘external invention’ angle and
the ‘claim-centred’ angle.[81]
About the external invention, he says: “
Under
the external invention, the technical information and discussion contained in
the patent’s specification define the invention”
.[82] In
relation to the claim-centered angle, however, he holds that: “The
claim-centered invention, in contrast, is defined by the patent’s claims”
.[83] He
professes conviction that the best approach to identifying invention is to go
by the external invention angle, and one of the reasons he gives (which is
identical to that of Jacob LJ) is that external invention relates to inventive
technical information possessed by the inventor before an application for
patents is embarked upon.[84]

 

The
‘Eureka moments’ (i.e. the inventive steps or concepts, if there are more than
one) must combine together to form a single technical teaching in the
specification. Otherwise there would be a mere ‘collocation’ without any interaction
or connection between them.[85]Both
Article 82 of the EPO and the s 14(5)(d) of UK Patent Act require that
the inventions must connect so as to form a single inventive concept at the
time of application, although it is enough that there is a technical
relationship between these technical features.[86]
Even where the determination of the interconnection between inventive steps
relates to the claims,[87]
such assessment will be done in the light of the specification.[88]

 

The
claims, on the other hand, are the ‘definition’ of the invention as opposed to
the ‘description’ of the invention contained in the specification. Chisum
explains that the claims serve to identify what the inventor regards as his
invention for patentability purposes[89]
and therefore the extent and bounds of protection sought.[90] Each
claim is considered as if it were in its own right as a patent[91]. More
so, each claim is considered a solution to a given technical problem[92].

 

But
the truth is that claims are simply abstractions from the specification,
covering a class of embodiments that share only some operating principle or
functional idea.[93]Chiang
relays a possible example of a situation, originally given by Merges and Duffy,[94]
whereby the original (table-top) transistor invented by Bell Laboratories which
hinged on the inventive concept of using semiconductor material in conjunction
with switch electronic signals, could be stretched to cover micro-transistor
and at further abstraction could be stretched to cover transistors systems of
modern times.[95]
Generally the first independent claim contains core technical features
presented in the specification (excluding inconsequential technical matters),
and then dependent claims are built upon the first independent claim. There may
further be other independent claims dedicated to particular aspects of the
inventive concept(s) contained in the specification.[96]
This
reflects the fact that claims do not have existence of their own independent of
the specification.[97]

 

This
takes us to the second argument which is that the specification serves as the
touchstone of proportionality between the technical teaching supplied and the
proprietary monopoly deserved.[98]
It is a trite rule in patent law that the inventor cannot get legal protection
beyond that which he has contributed to any given technical field.[99] This
is known generally in patent law parlance as the doctrine of ‘sufficiency’. In
EXXON/Fuel Oils
[100]
the Technical Board of the EPO said among other things:

 

…claims must be supported by the
description, in other words it is the definition of the invention in the claims
that needs support…[T]his requirement reflects the general legal principle that
the extent of the patent monopoly, as defined by the claims, should correspond
to the technical contribution to the art in order for it to be supported, or
justified.[101]

 

This
principle has been reiterated in a cascade of UK reported cases, prominent
amongst which is Biogen v Medeva.[102]
In a more recent UK on ‘sufficiency’, Generics v Lundbeck,[103] the
House of Lords, building upon Biogen v Medeva, seemed to have arguably
misused the phrase ‘technical contribution’. This is so because the court
adjudged the claims as the technical contribution, when it should have
considered the inventive concept disclosed in the specification as such.[104] The
implication of this is that it is apt to abrade the primacy of the
specification over the claims in inventorship disputes, as it could cause a
diversion of focus from the specification to the claims in the search for the
inventive concept(s).[105]
The term ‘technical concept’ should relate to the novel and inventive technical
information which forms the basis a patent application and subsequently issued
of claims if the European Patent Office’s jurisprudence were rightly followed.[106] The
House of Lord, however, held that the inventive concept or inventive step is
simply the kernel of the invention (in this case the disclosed process), while
the technical contribution is the evaluation or utilization of the inventive
step (the patented product resulting from the process).[107] In
truth however both the product and process in this case before the court were
technical contributions to the art; only that one was limited (the process),
while the other was unlimited (the product). In other words, the inventor could
lay claim to the product in issue regardless of whatever process it was derived
from, but he could not however claim any other process other than that he had
disclosed.

 

The
Exxon case had actually used the term ‘technical contribution’ in
relation to the technical teaching contained in the specification but not that
contained in the claim. The Board said:

 

Although the requirements of Article 83
and Article 84 are directed to different parts of the patent application, since
Article 83 relates to the disclosure of the invention, whilst Article 84 deals
with the definition of the invention by the claims, the underlying purpose of
the requirement of support by the description, insofar as its substantive
aspect is concerned, and of the requirement of sufficient disclosure is the
same, namely to ensure that the patent monopoly should be justified by the
actual technical contribution to the art. Thus, a claim may well be supported
by the description in the sense that it corresponds to it, but still encompass
subject-matter which is not sufficiently disclosed within the meaning of
Article 83 EPC as it cannot be performed without undue burden, or vice versa.[108]

 

Sufficiency
as a doctrine ensures that the monopoly claimed does not exceed the technical
contribution.[109]
This doctrine applies to cases where an inventor seeks to claim matters which
fall within the specification but which are not disclosed or technically taught
by it. For example, if chemical A+B+C+D was disclosed in the specification,
without B+C being specifically taught or identified, one would not be able to
claim B+C. An example of this is seen in
Glaxo Group Ltd’s Patent where the court said: “(u)nexpected
bonus effects not described in the specification cannot form the basis for a
valid claim of this kind.”
This position is also
the reason why we have selection inventions (i.e.
“a particular compound or relatively small group of compounds from
the larger groups previously disclosed in broad terms”)
[110],
largely in experimental sciences[111],
whereby matters which are intellectually adumbrated in the specification could
be specifically selected to form new technical teachings deserving patent
grant.

 

The
third argument is concerned with the background against which to understand the
inventor’s intention.[112]
Understanding the intention of the inventor as expressed in the claims has been
one of the most convoluted and debated matters in patent law.[113] It
is generally agreed in patent jurisdictions that the claims should be the only
basis to determine scope of monopoly the patentee is entitled to, but it is also
appreciated that words sometimes can be deficient when it comes to fully
rendering intention.[114]
Literalism in interpreting patent claims will “
leave
room for—indeed encourage—the unscrupulous copyist to take make unimportant and
insubstantial changes or substitution in the patent which
 though
adding nothing, would be enough to 
take the
copied matter outside the claim, and hence outside of the reach of law
”.[115]

 

As
a consequence the doctrine of equivalents was espoused to deal with non-literal
patent infringement.[116]
Therefore it seems right to say that
the more claims
are broad and certain, the less would be the reliance on the doctrine of
equivalents.
 In Kirin Amgen v Hoechst Marion Roussel
Limited
[117]
Lord Hoffmann, with concurrence of other judges, denied the existence of a
general doctrine of equivalents in the UK[118].
       It was however decided that if patents claims are well drafted they
could encompass after-arising technology which built upon the inventive concept
of the patent. This possibility would be contingent on “
whether
the person skilled in the art would understand the description in a way which
was sufficiently general to include the new technology.”
[119]

 

Collins
is of the position that the extent to which claims can be used to hold subsequent
technologies as infringing depends on the setting or time within which the new
technology is compared with purportedly infringed claims and specification.[120]If
the setting or time is held to be the time of filing the application then the
extent to which subsequent technology is captured will be limited. If however
it there is no time frame against which to make this comparison (so long as the
patent is not expired) then the specification can be used to catch any new
technological adaptation of its technical teaching[121].
This shows that the specification helps in situations where the claims have
inadequately claimed a monopoly.

 

The
fourth argument relates to stability. Stability or durability is another factor
which distinguishes the claims from the specification. It is a fact that while
patent claims are susceptible to being interpreted broadly or narrowly, the
specification bears more stability across the lifecycle of the patent, so long
as the skilled person in the art could put it to use without undue
experimentation.[122]
Claims are also protean in nature since while they could be broad at the time
of application they could have been thoroughly revised before grant or in fact
expunged outright. Additionally the conception of claims could also be
determined by economic or market interests or considerations.  Thus Jacob LJ
said:

…it is often the practice of patent
agents to put in first drafts which are wider than they expect to end up with
so as to draw a wide search. As for the final claims in the patent as granted,
their form and content will depend upon a number of individual factors—what has
turned up in the prior art forcing reduction in scope, what subsidiary claims
the patent agent has formulated based on the description and what monopoly is
actually thought to be valuable (there is no point in claiming wider).[123]

 

 Details
in the specification may admittedly also be revised or eviscerated, but this
would mean that claims which could have been founded upon the expunged parts of
the specification would not come into light at all. As the claims derive their
own lives from the specification[124]
the inventor has limited choice over his disclosure in relation to what he
claims; for so long as he claims a particular advance in a field of science he
must show the difference between his own inventive ideas and those which
previously existed[125]
and must also supply details sufficient to put the invention in the hands of
the skilled man.[126]
It follows therefore that the specification bears more stability or durability
than the claims.

 

The
economic or market significance of patent claims influences the protean
dynamics of claims.  Patent agents, who never even partook in the inventive
process, draft claims based on market considerations, so as to be able to
secure as much monopolistic breadth as possible. An American case corroborates
this proposition; the case of Solomon v Kimberley-Clark.[127] In
this case the court appreciated the possibility that the attorney might have
entirely conceived one of the most valuable claims in the patent, but held that
this was not enough to make the attorney a joint inventor since he was doing no
more than discharging his fiduciary duties towards the inventor.[128] However,
in the case of the specification, although it is also drafted by patent agents,
the drafting is closely tied to the inventive concepts disclosed by parties
involved in the inventive process. Therefore the drafting of the patent
specification bears more proximity with the inventive process than the claims
which are usually an abstraction from that process.

 

From
the foregoing analysis one can extrapolate that the specification is the sum of
inventive concepts provides the heart and backbone upon which the claims find
subsistence. Therefore anyone who contributes to the inventive concept or sum
of inventive concepts in the specification would have, either alone or in
collaboration with others, joined in providing the quid pro quo for
patent grant; they have supplied the measure of commensuration for patent monopoly,
devised the background against which to understand the inventor’s intent and
facilitated that which is durable and certain in nature. One might also add
that it better mirrors the intention of parties if they jointly assembled the
technical details of the specification to jointly own claims derived therefrom.

 

4.2
Claim-by-claim approach and the fragmentation of patent ownership

 

Another
reason the claim-by-claim approach should be eshewed in the UK that there are
no body of rules to expediently support it as is the case in the USA.  A
synopsis on the history of joint inventorship in the USA is firstly necessary
to help understand the dynamics and peculiarities of the US position. Thereupon
focus will be directed unto exploring why, as a consequence, the UK should
avoid this practice owing to the UK’s particular circumstances.

 

Koneckny
traces the evolution of joint inventorship in the USA.[129] He
starts off by saying that although in the early times of joint inventorship the
patent statute(s) never seemed to show aversion towards joint inventorship the
courts evinced grave apathy towards the idea. This was reflected in judicial
strictures placed on joint inventorship, such as requiring acclaimed joint
inventors to contribute to all the claims—the ‘all-claims’ requirement.[130] This
meant that all the claims in the patent had to be simultaneously and
substantially contributed to by the co-inventors.[131] This
judicial bias towards joint inventorship was induced by the rule that
co-ownership of patents resulted in each party gaining an undivided equal
entitlement to the rights arising from grants, a situation which would not seem
right if parties had unequally forged the claims.[132]

 

Most
prominent in this regard was the case of Worden v Fisher.[133]
In this case the court held all the claims valid except one which had not been
jointly worked out by the parties claiming joint inventorship. This jointly
invented claim was rejected as invalid. In another case of that time, Stewart
v Tenk
, [134]Stewart
and Campbell had contributed separate parts that were combined towards a
patented machine. The components of this machine formed the subject-matter of
several claims which had been jointly conceived by both, except the tenth claim
which was attributed to only Stewart; the court ordered that their
contributions be severed and distinctly patented. The court said:

 

….the evidence shows that Campbell did
not contribute to the invention covered by the tenth claim. Stewart was the
sole inventor of the slicing and coring-knife, and the patent for that, as a
separate and distinct part of the machine, should have been issued to him alone.[135]

 

Similarly
in
DeLaval Separator Co. v. Vermont
Farm Machine Co
[136]
although the parties had jointly contributed to the matters contained in the
specification they had not jointly conceived all the claims. The court found
that there was not joint inventorship for this reason. There was however an
exception in cases where the contribution of the parties were directed toward a
combined claim. Thus the court essentially stated that:

 

When a claim covers a series of steps or
a number of elements in a combination, the invention may well be joint, though
some of the steps or some of the elements may have come as the thought of but
one.[137]

 

Another
exception arose in circumstances where particular claims had been created by an
employer and other improvement claims had been the work of his employees.[138] In
such a situation the employee’s improvements were attributed to the employer as
natural annexations of his inventive ideas. This reasoning was followed in International
Carrier-Call & Television Corp.
v Radio Corp. of
America,[139]
with the court holding exceptionally that the employer would not be
entitled to improvements which were radically distinct from that which the
employer intended. There was a further extension of this reasoning in General
Motors Corp. v. Toyota Motor Co.
[140]
In this case two employers had worked different claims without being under
the technical direction of their employer. Nonetheless the court held that that
there was joint inventorship under the reasoning that the invention was created
for the purposes of their employer.

 

However,
where none of these exceptions arose the claims had to be severed and separate
applications had to be pursued.
In re Sarett[141]
is a case which confirms the implication of ruling against joint inventorship
as the court said:

 

It should be clear that the patent could
not legally contain a claim to Sarett’s sole invention under existing law
because it would not have been the invention of the joint patentees. This rule
of law forces the filing of distinct applications in many situations resembling
that before us and creates the complexities and delays which could be avoided
under a less rigid statute.[142]

 

However,
as Fasse explains, there were cases such as SAB Industri AB v Bendix[143]
which cast doubt on the existence of the ‘all claims’ rule on the basis that it
had no foundation in statute or the patent office rules.[144] Fasse
however posits that cases such as Mueller Brass v Reading Industries[145] did
not clearly express doubt on the rule, but decided in favour joint inventorship
despite acknowledging the difference in persons who had fashioned the claims.[146]

 

To
clear doubts and to encourage joint technological engagements the law was
reformed.[147]
The 1984 amendment to s 116 of the American Patent Act of 1952, which was made
to effect this change, provides that:

 

When an invention is made by two or more
persons jointly, they shall apply for patent jointly and each make the required
oath, except as otherwise provided in this title. Inventors may apply for a
patent jointly even though (1) they did not physically work together or at the
same time, (2) each did not make the same type or amount of contribution, or
(3) each did not make a contribution to the subject matter of every claim of
the patent.

 

The
implication of this is that where a party worked in conjunction with others
towards a given technical end contributing to at least one, but not necessarily
to all, of the claims he became a co-inventor and entitled to combine his own
separately contrived elements with others to form a single patent.[148]

 

However
the amendment of s 116 without also amending ss 261 and 262 (governing
ownership of patents) in the self-same Act meant that:

 

each
co-inventor presumptively
owns a pro rata
undivided interest in the entire patent, no matter what their respective
contributions.  Several provisions of the Patent Act combine to dictate this
rule……Thus, a joint inventor as to even one claim enjoys a presumption of
ownership in the entire patent.[149]

 

This
position has received fierce criticism.[150]Justice
Newman in her dissenting judgement in the same case, Ethicon, took the
view that it would be inequitable to allow a person to who had merely
contributed to a single or few claims to assert equal ownership rights with those
persons who had substantially contributed to the totality of the invention.[151]
Despite
this vigorous dissent, the majority’s position continues to prevail. Merely
contributing to a claim therefore allows in the US one to become a co-owner
bearing equal rights to those who devised the core inventive concept(s).[152]

The
UK neither has a history nor practice similar to that of the USA on this
subject, which makes it necessary that when disparate claims in a granted
patent are ascribable to discrete entities in a collaboration, ownership over
the ensuing patent should be commonly owned. However, the idea of adopting
statutory provision(s) as in the USA to allow ownership on the basis of claim
contribution would pave way for inequity and unfairness in inventorship matters,
as persons who have marginally contributed to the overall inventive concept (although
who may have significantly contributed to a claim or two) would assume an equal
status as an inventor.

 

When
the patent claims have a degree of technical contiguity but are owned by
different persons the result may be competing, complimentary, or blocking
patents (or a combination of these).[153]
Claims are complementary when they can be combined to form one composite (inventive)
entity;[154]
Inventions are blocking when the use of one is likely to infringe the other;[155]and inventions
are competing when they serve as alternative to each other.[156]

 

Let
it be imagined that a patent is granted for Chemical A+B, to be used as
a new dental formulation. Integer ‘A’, devised by Mr X, has the capacity
to clean tainted or stained enamel. Integer ‘B’, conceived by Mr P, is
able to treat gum infections. Additionally Mr. Z comes up with the idea of
combining integers ‘A’ and ‘B’ in paste form, a form which was
originally difficult for Messrs X and P to achieve. Integer ‘A’, integer
‘B’, and ‘A+B’ all qualify as independent claims.

 

If
inventorship is considered along the claim-by-claim lines then the result would
be that Mr. X would not be able to exploit matters falling within integer ‘B’-based
claim(s) and the paste-based claim(s); Mr Y would not be able to practice
matters falling within integer ‘A’-based claim(s) and the paste-based
claims; and Mr Z not be able to practice integers ‘A’ and ‘B’ singularly
except in their combined form as paste. Thus integers ‘A’ and ‘B’
would become complementary inventions, while integers ‘A’ and ‘B’
would serve as blocking patents against the paste-based combination of both
integers, and vice versa. Let it be further assumed again that Mr. Z’s
laboratory assistant, Mr W, comes up with a claim based on combination of
integers A and B in tablet form. The paste-based claims and the
tablet-based claims will then become competing inventions.

 

Thus
it becomes obvious that the claim-by-claim approach is apt to cause the
fractionalization of patent proprietorship. In general, and particularly in fast
advancing sciences such as biotechnology (and also modular or complex technologies)
where contiguous improvements to inventive concepts might be hit upon soon
after the realization of  leading inventive concepts[157],
this would pose problems for the exploitation of technology.[158] Those
seeking to make use of technological matters contained in different patent
claims (of same patent) would have to seek licences from each claim proprietor,
and each of these claim proprietors would additionally have to engage in
cross-licensing. This will throw up tedious and expensive licensing negotiations
(i.e. transaction costs) and, in some cases, will require recourse to
administrative remedies such as compulsory licenses.[159] Some
inventions (i.e. claims) would eventually be left unexploited or unused
because, because they are blocked, need to be assembled in combination with
others to achieve their function or there is an alternative which is better
and/or cheaper.[160]
This could throw up a morass of complexities that come with patent thickets[161] or
and patent anti-commons[162]–market
failure. Applying economic theory to patents one can say a patent market
failure may be said to arise in situations where economic value(s) which could
to be derived from the use of patents cannot be achieved because of bargaining
difficulties resulting from a divergence in the ownership of patents.[163]

 

 

4.3
Room for specious inventorship assertions.

 

Discussion
on this point builds upon the argument made above that claims are protean and
uncertain in nature. Since the choice of claims is discretionary these are not
be a dependable starting point to found an inventorship claim. One unscrupulous
advantage that it gives to a putative inventor is that, upon being able to show
a nexus with other inventive entities or inventors, it allows him to wait till
all the claims have been drafted or granted before then launching a claim of
inventorship. Tresansky confirms this position upon reviewing American cases on
this subject:

 

These cases strongly suggest that an
inventorship determination should not be made until the specific nature of the
contributions of each participant involved in the making of the invention is
ascertained and the claims of an application have been drafted in substantially
final form.[164]

 

Sherry
opines that although where there are no claims the specification could be a
starting point for determining inventorship where an application has not been
filed; but in practice this is rarely the case.[165] She
holds further that where an application has been filed one could assert
inventorship on the basis of drafted claims but that if, upon patent grant, the
claim which forms the core of one’s assertion is not successfully issued then
one can be struck out of the list of co-inventors.[166]

 

More
so, using the claims as the starting point could bring about inequity since
claims could be subjectively expressed. To avoid subjectivity the approach in
the USA (for example as seen in Trovan v Sokymat SA[167]) 
is to hold that “an inventorship analysis, like an infringement or
invalidity analysis, begins as a first step with a construction of each
asserted claim to determine the subject matter encompassed thereby.”
[168] This
way the court seeks to sieve out the inventive concept behind the claim
objectively. But the truth is that the inventive concept contained in the claim
is only a derived inventive concept; it is an abstraction from the
specification.[169]The
inventive concept contained in claims are therefore arguably more subjective
than those contained in the specification given that the specification relates
to established technical information, while the claims are merely protrusions
of this. The broader the scope of protection sought, the broader the inventive
concept would be, but the narrower the protection sought the narrower the
inventive concept would be. Jacob LJ confirms this view in European Central
Bank v DSS
[170]
saying:

 

Professor Mario Franzosi likens a
patentee to an Angora cat.
When validity is
challenged, the patentee says his patent is very small: the cat with its fur
smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the
fur bristles, the cat is twice the size with teeth bared and eyes ablaze.[171]

 

Thus
claims could be narrowed or broadened to deny or support a person’s claim to
inventorship, depending on the circumstances of the case. The same cannot be
said for the specification which, beyond describing the ideas supporting the
claims, provides a detailed account of the background, contents and history of
the inventive concepts contained in it.[172]
If an attempt is made to unfairly shrink the inventive concepts of the
disclosed in the specification so as to deny another’s assertion of
inventorship one diminishes the claims that can arise from and be supported by
the specification. If, however, the sum of inventive concepts in the
specification is left broad then a putative inventor would have to indicate
those technical matters contained in the specification which emerged from him; the
failure of which denies him entitlement.[173]
Hence the specification serves well as the starting point for such
considerations. If a party cannot demonstrate his contribution to or influence
upon the specification, why should (s)he be allowed an easy route to
entitlement by pointing to claims ascribable to him?

 

The
American case of The Board of Education v American Bioscience, Inc[174]
brings this situation to light. In this case the district court had held that
the sole independent claim and its dependent claims could be attributed to the
respondents and one of the appellants. On appeal however the court found for
the appellants on the ground that the process and starting materials invented
by the respondents was not the same as that which had been conceived by the
appellants, and could not in fact have brought the claims into being. This
shows simply that the court here was concerned beyond the claims, as it
inquired into the source of the claims; in other words into the technical
teaching responsible for the claims as contained in the specification.

 

In
the very recent case of Falana v Kent State University[175] the
plaintiff had devised the methods and chemical structure which had made it
possible for the defendants to fashion the claimed chemical compounds. The
defendants argued that inventorship revolved around the contrivance of claims
but that the claim in issue, Compound 9, had nothing to do with the
contribution of the plaintiff. The court disagreed, saying:

 

 The claims of the ’789 Patent are not
limited to Compound 9. Instead, they claim a subset of the entire genus of
naphthyl substituted TADDOLs—those which are RR enantiomers. Falana contributed
to the conception of this genus by providing the team of which he was a part
with the method for making these novel compounds. Falana’s lack of contribution
to the discovery of Compound 9 itself does not negate his contribution of the
method used by the other inventors to make the genus of compounds covered by
the claims at issue.[176]

 

Here
the court was not carried away by the wording of the claims but rather focused
upon the whole technical teaching responsible for the claims of the patent
issue which Falana (the plaintiff) had played a vital roles in.

 

One
important point to make is that false inventorship claims are contingent upon
the nature of the science to which patents relate.  It is possible to argue
that the cases of Falana and American Bioscience turned out as
they did because nature of the technical field to which the inventions relate[177](namely
chemistry). A degree of specificity is necessarily required in such
experimental science fields.[178] 
The starting materials to a large extent have to be exact, the parameters have
to be reasonably precise, quantification has to defined, and so on.[179]
These conditions have to be stated in the specification so as to be able to
support the claims. This would mean that the levels of abstraction, in form of claims,
which could be made from the specification in experimental sciences would
highly likely have close proximity with the specification. This does not mean
that there cannot be generic claims (Markush claims) in experimental science,
but this too would require exacting disclosure details and, as such, the levels
of robust abstraction would generally be low.[180]
Therefore it appears that for one to have substantially contributed to a claim
in experimental science patents one would to have somehow influenced the
specification’s formulation.

 

This
contrasts with predictable arts—such as electronics, mechanics, IT, etc[181]—where
the levels of abstraction that can be made from the specification could be broad.
To use the words of Bernard Chao: “In cases where the technology is predictable,
disclosing a single embodiment will often allow persons of skill in the art to
practice other embodiments”.[182]
Lemley and Burk have expounded upon the thesis that emergent technical fields
are likely to be unpredictable, but mature areas are more predictable and these
peculiarities affect the patentability of matters arising from them.[183]
Thus, they opine, unpredictable sciences will usually have low inventive step
requirements, but high disclosure and enablement requirements. On the other
hand, predictable areas are likely to have high-inventive step requirements but
lower disclosure requirements. The reasons provided are simply that emergent
technologies (usually those arising from experimental sciences) would usually not
have been fully explored and thus the average skilled person(s) in the field
(for patent law purposes) cannot easily foresee the possible advancement. As
such it would be more difficult to show obviousness and elaborate explanation
of the invention will be necessary.[184]
On the other hand, mature or established fields (usually predictable arts)
would likely have been overly explored and as such the inventiveness
requirement would be heightened, with minimum disclosure required to put the
invention into practice.[185]

 

The
two immediately preceding paragraphs therefore demonstrate that just as
patentability could depend upon the nature of the art (i.e. whether it is
experimental or predictable) so too could the propensity to assert false
inventorship. Thus it will be less easy to claim inventorship speciously in
experimental arts than predictable arts, even in circumstance where a
claim-by-claim approach were followed. As a result applying the claim-centric
approach to inventorship in a predictable field will allow for spurious
inventorship. For example if A, while working in connection with B, had
conceived a matter which happens to form the basis of a claim within a subsequently
conceived generic conception of matters (i.e a disclosure) by B but founded
upon sum of distinct principles (from those conceived previously by A).
This will give reason for A to claim co-inventorship with B, if the
claim-by-claim approach were adopted. However, going by the specification
rather than the claims in ascertaining inventorship would help avoid such an
unfair outcome.

 

This
is what happened in Markem v Zipher. The plaintiff (a former employer)
purportedly had an inventive idea which they believed had been disclosed to
some of defendants (their erstwhile employees) confidentially, with the latter
improving on it and leading to the disclosure of a new technical teaching. When
a patent was granted to the defendant the plaintiff sought ownership over claims
which had been founded on the purported inventive conceive concept(s) they had
allegedly disclosed to the defendants. The Court of Appeal, overturning the
High Court decision, held that since the plaintiffs could not show their
conceptual contribution to the contents of the specification they could not consequently
establish ownership to any of the claims arising from the patents.
The
court found that the supposed inventive concept disclosed confidentially was
not in fact confidential as professed and thus was part of the state of the
art. If further held that the only likely remedy available to the claimants was
a revocation of the claim in issue on the basis on prior disclosure; not joint
inventorship.[186]
The court however did hold that even if the purportedly usurped inventive
concept qualified as ‘confidential information’ and was subsequently advanced
as to form the subject-matter of the specification the Comptroller of patents had
sufficient discretion to do justice to the plaintiff (whether by imposing
compensation or ordering a licence etc.) but not to declare joint inventorship
in such situation: there was no joint conception of the inventive concept(s)
contained in the specification.[187]

 

 

5.
Conclusion

 

It
is argued in this article, after a review of the US and UK practices, that
preference should be given to the sum of inventive concepts contained in the
specification over those contained in the the claims when it comes to the
representation  of ‘invention’ in entitlement disputes. This article argues
that the specification should be the fulcrum for determination in inventorship
contexts.

 

This
should be the case as, because judging by functional relationship between the
claims and specification, the specification represents the raison d’etre of
the claims. The specification is more stable across the lifecycle of the patent; 
serves as guide in determining deserved monopoly where claims are disputed (i.e.
sufficiency and interpretation of claims); and going by the specification helps
to prevent false inventorship assertions. Additionally an approach utilising
the specification helps to avoid the fragmentation of entitlement when it comes
to a singular patent with several claims.

 

In
summary, except to the extent that claims account for the economic value of an
issued patent, the information contained in the specification is technically
superior to the claims. This therefore makes the specification the better point
of reference in inventorship disputes.

 

 



*PhD
Candidate, Law School, University of Tasmania (Australia); author’s contact:
moshood.abdussalam@utas.edu.au. Special thanks to Professor Dianne Nicol
(University of Tasmania) and Professor Tun-Jen Chiang (George Mason University,
USA) for their advice and corrections.

[1] Historically,
some patent regimes existed which granted monopoly rights for reasons other
than inventive merit. These reasons included: politics, affiliation with the
government of the day and being first to introduce a novel trade or manner of
manufacture into the territory. Notable examples of such systems include the
Ventian patent system statutorily  promulgated in Venice in 1474 and the
England system which existed around 1545. See A Mossoff, “Rethinking the
Development of Patents: An Intellectual History, 1550-1800” (2001) 52 Hastings
Law Journal
1255- 1322 at 1266 See also G Mandich, “Venetian Patents
(1450-1550)” (1948) 30 Journal of the Patent Office Society 166-
224.

[2] D
Cox, “Academic dilemma? Antipodean and New World directions on the ownership of
inventions” (2012) 7(2)
Journal of Intellectual Property Law
& Practice
135-145;See also K Liddell, “Patent
Entitlement Claims: Markem Overruled” (2008) 67(2) Cambridge Law Journal

256-260.

[3] H. E
Potts, “The Definition of Invention in Patent Law” (1944) 7(3) Modern Law
Review
114-115.

[4] See
L Sung, “Collegiality and Collaboration in the Age of Exclusivity” (2000) 3 DePaul
Journal of Health Care Law
411-439.

[5] A
Kriss, “Misrepresentation of Inventorship and the Inequitable Conduct Defense: PerSeptive
Biosystems, Inc. v. Pharmacia Biotech, Inc
” (2002-2003) 12 Fed. Cir.
B.J.
285-330.

[6] This
was discussed by
Justice Laddie in his first instance judgement in University
of Southampton Application
s
[2005] RPC 11, at
paragraph 220, noting that: “First, it is necessary to identify the inventive
concept or concepts in the patent or application. Secondly, it is necessary to
identify who came up with the inventive concept or concepts. He or they are the
inventors. Thirdly, a person is not an inventor merely because he “contributes
to a claim”. His contribution must be to the formulation of the inventive
concept”.

[7] Mueller
Brass co. v Reading Industries Inc
176 USPQ 361 (1972).

[8]IDA Ltd
and others v University of Southampton and others
[2006] EWCA Civ
145.

[9]
Ibid, para.  44.

[10] Chartered
Institute of Patent Attorneys Guide to the Patent Acts
6th ed. (Thomson
Reuters (Legal), 2009), at 202.

[11] C Cotropia, Patent Claim Interpretation Methodologies
and Their Claim Scope Paradigms
”(2005) 47 William &
Mary L. Rev.
49
-133.

[12] M
Risch,“The Failure of Public Notice in Patent Prosecution” (2007) 21(1)
Harvard
Journal of Law & Technology
179-232 at 182 which states that:
“A valid patent application must contain several different, statutorily defined
elements. First, the patent application must describe the nature of the claimed
invention and enable a PHOSITA to recreate and use the invention. This
description is called the “specification.” Following the specification there
must be a list of “claims” to the invention “particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention.”

[13] An approach can be
said to be efficient when at minimal cost(s)
or efforts, resources are put
to the best use possible to achieve the most socially or economically desirable
outcome(s). See R Cooter,
Liberty Efficiency
and the Law
” (1988)
50(4)

Law and Contemporary Problems
141-163,
at 142
.

[14]  V
Denicolo and L Franzoni, “The Contract Theory of Patents” (2004) 23
International
Review of Law and Economics
365–380.

[15] See University
of Southampton Applications
, RPC 2005, 220 at 234, where Justice Laddie
defined the deviser as the natural person who came up with the inventive
concept.

[16] M
Fisher, “Classical Economics and Philosophy of the Patent System” (2005)
Intellectual Property Quarterly
1-26.

[17] R
Chandra, Knowledge as Property: Issues in the Moral Grounding of
Intellectual Property Rights
(Oxford University Press, 2010), at xxiii.

[18] Rhone
Poulenc Rorer v Yeda Ltd
[2007] UKHL 43.

[19]Markem
v Zipher

[2005]
R.P.C. 31.

[20] Rhone-Poulenc
Rorer Inc v Yeda Ltd,
see note 17 above, paras. 18-19 Cf. the
American case of University Patents Inc v v. Kligman, 762 F.Supp. 1212,
1218-19 (E.D. Pa.1991) where the court said inventorship should always supply “
the starting point for determining ownership of patent rights.”.

[21] S B
Seymour, “My Patent, Your Patent, or Our Patent? Inventorship Disputes Within
Academic Research Groups” (2006)
16 Alb. L.J. Sci. & Tech. 125-167.

[22]
Row Weeder Pty Ltd v Nielsen
(1997) 39 IPR 400

[23] University
of Southampton Application
[2005] R.P.C. 11, paragraph 39. Cf
E Gifford and A Goldstein, "Ownership of intellectual property" in A
Goldstein, (ed.), Patent Law for Scientists and Engineers (CRC Press, 1st
edition 2005) at 101, who postulates that there are two steps to take towards a
just determination of such a question; (a) identify those who contributed the
disputed subject matter and (b) determine if the subject matter was recited in
a patent claim. Goldstein’s position does not necessarily represent the US
practice. In Trovan v Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002),
the Federal Circuit held that the invention had to first be determined then a
comparison is made between the invention and contributions made by the putative
inventors.

[24] See
note 6 above.

[25] O Liivak,
“Finding Invention” (2012) 40(57) Florida State University Law Review
57-103 at 59 which states:For
some, the invention is a very a narrow concept tied directly to actual physical
thing made by the inventor. That narrow definition can provide well-defined
boundaries but many object arguing that, though, clear, it would provide far
too narrow protection. In particular, such a rule would prevent patent
protection from reaching after-arising technology – a type of patent scope
that, though controversial, has been available in some form for quite some
time. For others the invention is a broader concept encompassing some more
abstract idea behind the actual thing created by the inventor”.

[26] P.
G. Gattari, “Determining Inventorship for US Patent Applications, Intellectual
Property and Technology Law Journal” (2005) 17(5) Intellectual Property and
Technology Journal
16-19 at 16 which states that “Because an inventorship
determination focuses on the invention claimed and not merely described
in a patent, the first step in an inventorship analysis is to determine the
scope and meaning of the claims”.

[27]P
Janicke, “The Varied Meaning of “Invention” in Patent Practice:
:
Different Meanings in Different Situations”, in 4 Patent Law Perspectives, at
App. 1 (Donald R. Dunner et al., eds., 1970)
as cited in In
re Faizulla G. Kathawala
  9 F.3d 942 (Fed. Cir. 1993)

[28] R Feldman,
“Inventor’s Contribution”, 2005 6 UCLA J.L. & Tech. available at
http://repository.uchastings.edu/cgi/viewcontent.cgi?article=1155&context=faculty_scholarship

[29] Per
Lord
Russell of Killowen in Electric and Musical Industries Ltd v Lissen Ltd (1938)
56 RPC 23, 39: "The function of the claims is to define clearly and with
precision the monopoly claimed, so that others may know the exact boundary of
the area within which they will be trespassers. Their primary object is to
limit and not to extend the monopoly. What is not claimed is disclaimed. The
claims must undoubtedly be read as part of the entire document and not as a
separate document; but the forbidden field must be found in the language of the
claims and not elsewhere." See also Kirin Amgen v Hoechst, [2004]
UKHL 46

[30] J
Needle, “Patent Decisions: Infringement and Validity” (2008) C.I.P.A.J. 37(7),
394-395.

[31]Conor
v Angiotech
[2008] R.P.C 28

[32]
Ibid, para. 17.

[33]V
Irish, “How to Read a Patent Specification” (2000) Engineering
Management Journal
71
-73 at 71, which states that “
The
normal process is that an inventor generates an idea that she believes is new
and solves a problem she is working on; she writes a description and sends it
to a patent attorney who can either be an employee of the company the inventor
works for, or an external agent in private practice.”

[34]See D
Meale and S Moore, “House of Lords simplifies the law on patent entitlement”
(2008) J.I.P.L.P. 3(2), 76-78.

[35] See
University of Southampton Application [2005] R.P.C. 11, paragraph 39

[36] See
note 8 above.

[37]C
Ailsa and S Ayrton, “Is Making the Invention not Enough? Analysis of the Court
of Appeal’s Approach to Entitlement in Markem v Zipher” (2006) 28(1) European
Intellectual Property Journal
51-56

[38]Viziball
Ltd’s Application
[1988] R.P.C. 213

[39]Norris
Patent Application
[1988] R.P.C. 159

[40] Z.G
Tibor, “Entitlement Disputes: A Case Review” (1990) 12(10) European
Intellectual Property Journal
382-387. However, it is submitted that Tibor
failed to appreciate at the time of his writing that Viziball took the
‘claim-by-claim’ approach while Norris took the ‘holistic’ or
‘specification’ approach.

[41] Inventive
concepts in this context can be taken to mean the technical features that
define a contribution which each of the claimed inventions, considered as a
whole, makes over the prior art (See G Gregor and D Gibbins, “
Inventive
Concept: Is It A Good Idea?” (2005) 27(5) European Intellectual Property Review
170-175).

[42] D
Brook, N Macfarlane, “Entitlement Disputes” (2006) 1(2) Journal of
Intellectual Property Law & Practice
86-88.

[43] The
court approved that statement of the Hearing Officer which stated in page 164
of the judgment that: “Claim 1 of the international application is broader in
scope than this, primarily because it does not refer to monitoring the rate of
change of the output and detecting the maximum rate of change. However, I am
not concerned with the precise formulation of the claims. Both sections 8 and
12 make it clear that questions of patent rights can be considered even if no
application has been filed, and therefore before claims have been drafted.
Moreover, a patent application is not worthwhile until the applicant is in a
position to describe his invention in terms such that it can be performed by a
skilled person. I therefore need to consider all aspects of the invention. The
patent contains details of the mechanical and electronic system used to provide
the functions essential for the automatic determination of the refractive index
of the sample, and it is clear that these arrangements play a significant part
in the viability of the instrument. Although neither side placed much emphasis
on this aspect I think it proper that I should consider it.”

[44] Henry
Bros v Ministry of Defence
[1999] R.P.C 442-452.

[45] Minnesota
Mining and Manufacturing Co’s International Patent Application
[2003]
R.P.C. 28

[46]
Ibid, at page 555

[47] In
order words, the patent was to be granted in the names of both parties but
their proprietary entitlement different on the basis of the claims they have
devised.

[48] Collag
v Merck
[2003] F.S.R. 16

[49]Stalenco
Fibre Optics v Bioprogress Tech. Ltd
[2004] EWHC
2263 (Pat)

[50] At
page 329, the court stated among other things that:
“In the present
case only one of the applications has resulted in the grant of a patent, but
the parties have agreed, sensibly and helpfully, that the issue of inventorship
should be determined by reference to the claims of the three relevant PCT
applications and that I need look no further into those applications for
further or other inventive concepts.”

[51] Markem
v Zipher

[2004] R.P.C. 10

[52] Minnesota
Mining and Manufacturing Co’s International Patent Application
[2003]
R.P.C. 28

[53] Markem
v Zipher
[2004] RPC 10, page 226

[54] Ibid,
page 226 (“It is in my judgment not correct always to initiate the enquiry by
construing the claims of an application and then deciding, as if the exercise
were one of infringement, whether, properly construed, they cover something
which the referrer says had been devised by him at some other time. There may
nonetheless be cases where, as I have said, the claims submitted with an
application may legitimately be regarded as an accurate epitome of the
inventive concept or concepts. Whether this is so will depend on the facts.”)

[55]K Conlon,
Patents, (2006) 28(8) European Intellectual Property Review 152-154

[56] Per
Lord Hoffmann in Sabaf SpA v MFI Furniture
[2004]
UKHL 45 at para. 26
What
the Guidelines do is to state the principle upon which you decide whether you
are dealing with a single invention or not. If the two integers interact upon
each other, if there is synergy between them, they constitute a single
invention having a combined effect and one applies s.3 to the idea of combining
them. If each integer “performs its own proper function independently of any of
the others”, then each is for the purposes of s.3 a separate invention and it
has to be applied to each one separately”.) See also Marc Wilkinson,
Patent: Inventive Step- Collocation and  Validity and Infringement, European
Intellectual Property Journal
, 2006.

[57] Markem v
Zipher,

[2005] R.P.C. 31, para. 102.

[58] [2006]
R.P.C. 21 stating at page 578:
“Next I should expand a
little on the “inventive concept” for the purposes of entitlement disputes. Markem
has already pointed out that one is not bound by the form of the claims, if
any. I think there is a great danger in being over-elaborate about this, about
dividing the information in a patent into a myriad of sub-concepts, each of
which is considered separately. One must proceed more like a hedgehog than a
fox. And after all there is supposed to be only one inventive concept in a
patent….”
See
also GE Healthcare Ltd v Perkinelmer Life Sciences Ltd [2006] EWHC 214
(Pat); where the court stated the conceiving a claim does not make one an
inventor.

[59]Welland
Medical Ltd v Philip Arthur Hadley
[2011] EWHC 1994 (Pat)

[60]Statoil
v Southampton
  O/204/05

[61] N
Briggs, “Entitlement” (2006) 28(12) European Intellectual Property Review,
611-616

[62] IDA
Ltd v University of Southampton
, note 8 above, at para. 43, Per Jacob LJ
who states “I think there is a great danger in being over-elaborate about this,
about dividing the information in a patent into a myriad of sub-concepts, each
of which is considered separately. One must proceed more like a hedgehog than a
fox. And after all there is supposed to be one only inventive concept in a
patent, see 14(5) (d).”

[63] Statoil
v Southampton,
note 61 above, at para. 43

[64] G S. Rich, “The Extent
of Protection and Interpretation of Claims—American Perspectives(1990)
21 Int’l Rev. Indus. Prop. & Copyright L.
497 at 499 which states “[T]he
name of the game is the claim.”, as cited in John Duffy, “On Improving the
Legal Process of Claim Interpretation:
Administrative
Alternatives
” (2000) 2 Washington University Journal of Law and
Policy 109-166, at footnote 7. See also Giles S. Rich, “Are Letters Patents
Grants of Monopoly?” (1993) 15 W. New Eng. L. Rev. 239-255.

[65] See
Kimberlee Weatherall and Elizabeth Webster, “Patent Enforcement: A Review of
the Literature” (2014) 28 Journal of Economic Surveys 312-343

[66] J
Miller, “Enhancing Patent Disclosure for Faithful Claim Construction” (2005) 9 Lewis
and Clark Law Review
177-230.

[67] D
Hricik et al, “Save A Little Room For Me: The Necessity of Naming As Inventors
Practitioners Who Conceived of Claimed Subject-Matter” (2005)
5(1) Loy.
L. & Tech. Ann
. 1-51.  

 

[68] For
a discussion of this point, see, R Benjamin, “Note: The Disclosure Function of
the Patent System (Or Lack Thereof)” (2005) 118(6) Harvard Law Review2007-2028
which states that“As the Supreme Court explained in Kewanee Oil Co. v.
Bicron Corp
, "the disclosure of patent applications adds to the
public’s "general store of knowledge" and "is assumed [to]
stimulate ideas and the eventual development of further significant advances in
the art."”

[69]
Sections 14(3) and 72(1)(c) of the UK Patent Act 1977

[70] B
Lu, “
Disclosure
requirements for patent application: Article 29 of the TRIPs Agreement and a
dimensional exploration” (2012) 34(5) European Intellectual Property Review
336-342(“Court of Appeals for the Federal Circuit……observed that
“disclosure is the first role of a patent”. Scholars also have argued in favour
of disclosure’s deserved centrality
in the patent system.”)

[71] Arlington
Industries, Inc v Bridgeport Fittings, Inc
No. 10-1025
(Fed. Cir. Jan. 20, 2011), at pages 2-3

[72] Ibid

[73]J
Fromer, Patent Disclosure (2009) 94 Iowa Law Review 539-606 at 567. See also M
Janis and T Holbrook, “Patent Law’s Audience”(2012) 97 Minnesota Law Review 72-131.

[74] Fromer,
Ibid.

[75] Rich
noted that “[T]he name of the game is the claim”. See note 63 above.

[76] G S.
Rich, “Foreword” in F. S. Kieff et al., Principles of Patent Law, 4th
ed. (Foundation Press, 2008) at v–vi

[77]O
Liivak , “Rescuing the Invention from the Cult of Claims”(2012) 42(1) Seton
Hall L. Rev
1-54 .  See also O Liivak, “Finding Invention” note 27 above;
See also M Lemley, “Point of Novelty” (2011) 105(3) North Western University
Law Review
1253-1280 .
T
Chiang and L Solum, “Interpretation-Construction Distinction in Patent Law”
(2013) 123 Yale Law Journal Volume 123, 2013, pp. 530-614
. See
also T Chiang, “Defining Patent Scope by the Novelty of the Idea” (2012) 89
Washington University Law Review
1211-1268.

[78]D
Bainbridge, Intellectual Property, 8th ed.,(Longman, 2010), at
402-411.

[79]Earnest
Lipscomb III, Lipscomb’s Walker on Patents (The Lawyers Co-operative Pub.
Co, 1985) Vol. 3, Sect.10:1

[80] Markem v
Zipher
,
[2005] R.P.C. 31, paragraph 98

[81] C Cotropia,
What is the "Invention"? (2012) 53 Wm. & Mary L. Rev. 1855

[82] Ibid

[83] Ibid

[84]Ibid,
page1896 (“The “external invention” is an invention that exists independently
of the patent document and prior to the filing of the patent application. The
inventor defines it by engaging in some real-space activities and recognitions,
which can range from the simple — notes and diagrams on a tablecloth — to the
complex — the actual building and commercialization of the invention before
filing the patent application.

External
invention requires the inventor to conceive of the invention prior to filing.
Conception, as patent law defines it, is the “formation in the mind of the
inventor, of a definite and permanent idea of the complete and operative
invention, as it is hereafter to be applied in practice.” This idea, “so
clearly defined in the inventor’s mind that only ordinary skill would be
necessary to reduce the invention to practice, without extensive research or
experimentation,” is the external invention. It may or may not be communicated
to anyone prior to patent filing, but it has a concreteness that facilitates
its use in real space.

This
external invention finds its way into the patent document via the
specification. The specification contains many details about what the inventor
thinks and has done regarding the invention.”)

[85]Per Lord
Tomlin in British Celanese Ltd v Courtaulds Ltd (1935) 52 R.P.C. 171 ,
193

“a
mere placing side by side of…integers so that each performs its own proper
function independently of any of the others is not a patentable combination,
but that where the…integers when placed together have some working
inter-relation producing a new or improved result then there is patentable
subject-matter in the idea of a working interrelation brought about by the
collocation of the integers.” See also C Winter, “Patents:
infringement – collocation of known integers precluding inventive step –
obviousness – gas burners” (2002) 24(2) European Intellectual Property
Review
19-20.

[86] W
0002/95 (Etikettenbogen) of 18.10.1995, available at
http://www.epo.org/law-practice/case-law appeals/recent/w950002du1.html  (last
accessed 13/03/ 2014). See also see also, T Holbrook, “Equivalency and Patent
Law’s Possession Paradox” (2009) 23 Harvard Journal of Law and Technology 1-48

[87]This
is as opposed to that of the specification, where the question relates to
whether the claim relates to a single inventive concept. See
T
94/91
,

Pressure
Filters,
http://www.epo.org/law-practice/case-law-appeals/recent/t910094eu1.html (last
viewed 13/03/2014)  (“…the general inventive concept such as defined in Article
82 EPC cannot be equated with the features recited in a claim or in a
particular combination of claims. What should be considered is the inventive
concept as defined in the claims with dud regard to the description and
any drawings”)

[88] W
0006/97 (
Foamed
pressure sensitive tapes).

[89] This
is for the purposes of determining the eligibility of subject-matter: novelty,
inventive step, utility and nonobviousness.

[90] D
Chisum , A Treatise on the Law of Patentability, Validity and Infringement,
(Matthew  Bender, 1998), Section 8.2[1]. See also D Brennan, “The
Evolution of English Patent Claims as Property Definers” (2005) 4 I.P.Q.
361-399

[91] C Dent,
“Non-overlapping rights: a patent misconception” (2010) 32(2) European
Intellectual Property Review
58-66

[92]Johns
Hopkins University School of Medicine/Growth Differentiation factor-9

(Case T 1329/04), June 28, 2005 where it was noted that
“The
definition of an invention as being a contribution to the art i.e. as solving a
technical problem and not merely putting forward one, requires that it is at
least plausible by the disclosure in the application that its teaching solves
indeed the problem it purports to solve.”

[93] T Chiang,
“The Levels of Abstraction Problem in Patent Law” (2011) 105(3) North
Western University Law Review
1097-1152.

[94] R
Merges and J Fitzgerald Duffy,
Patent Law and Policy: Cases and
Materials

4th ed. (LexisNexis, 2007).

[95] T
Chiang, op cit., page 1097

[96] J.R.
Thomas, “Of Text, Technique, and the Tangible: Drafting Patent Claims around
Patent Rules”, (1998-1999) 17 J. Marshall J. Computer & Info. L. 219-275

[97]A X
Fellmeth, “Conception and Misconception in Joint Inventorship” (2012) 2(1) New
York University Journal of Intellectual Property and Entertainment Law 73-141
at
94 which states: “For both anticipation and infringement purposes, then, claims
do not “define” the invention in the conventional sense; they define the rough
outlines of what part of the invention can overcome anticipatory prior art and
accordingly what part of the invention the patent protects from infringement.
This key distinction between the invention and the claims has unappreciated
importance for determinations of inventorship, and especially of joint
inventorship.”

[98] G
Blachman and R Freeland, “The law of insufficiency: Is Biogen still good law?”
(2009) 31(9) European Intellectual Property Review 478-483

[99] See
Brunner, Yingkun and Rudolf Teschemacher, “Sufficiency of disclosure and
support of the claims in proceedings before the SIPO and the EPO” (2012) Int’l
Rev. Intell. Prop. & Competition L. 390-400

[100]
Decision T409/91, EXXON/Fuel Oils [1994] O.J. E.P.O. 653,

[101]
Ibid, Reason 3.3

[102] Biogen
v Medeva

[1997] R.P.C. 1

[103] Generics
v Lundbeck

[2009] R.P.C. 13

[104] Cf 
The recent case of HTC Europe Co Ltd v Apple Inc, and Apple Inc v
HTC Corporation
, [2013] R.P.C 30, where the Court of Appeal considered the
term ‘technical contribution’ to be synoymous with the ‘technical effect’ of a
given claim. (““Technical effect” (in the heading) and “technical contribution”
(in the text) appear to be synonymous. In the case T 0154/04, Duns Licensing
Associates, the Board referred to

[105] The
House of Lord’s error appears to have been induced by the
unusual
facts of the case. In this case the inventive step involved using a method to
separate Escitalopram, the pure (+) enantiomer, from Citalopram which was a
racemate comprised of (+) and (−) enantiomers. Thus bearing an inventive
process and as well as an inventive product. A claim to Escitalopram as a
product regardless of whatever method was adopted in creating it was contested
as being insufficiently supported by the specification. Although the court
found sufficiency on the ground that a product patent covers all methods of
making it even if just one method was disclosed, it went ahead to upset an
established principle in this aspect of patent law. 

[106] See
quote below, note 108, from Exxon, Reason 3.5

[107]
Generic v Lundbeck, [2009] RPC 13 page 420 (“Inventive concept” is concerned
with the identification of the core (or kernel, or essence) of the
invention—the idea or principle, of more or less general application (see Kirin-Amgen
[2005] 1 All ER 667, paras 112–113), which entitles the inventor’s achievement
to be called inventive. The invention’s technical contribution to the art is
concerned with the evaluation of its inventive concept—how far forward has it
carried the state of the art? The inventive concept and the technical
contribution may command equal respect but that will not always be the case.”)

[108]
Exxon, note 102 above, Reason 3.5

[109] D J.
Brennan, “Biogen Sufficiency Reconsidered” (2009) 4 I.P.Q. 476-508.

[110]
Philip Grubb and Peter Thomsen, Patents for Chemical, Pharmaceuticals and
Biotechnology
(Oxford,5th edition 2010) 247-248

[111] Sean
Seymore, “Heightened Enablement in Unpredictable Arts” (2008) 56 UCLA Law
Review 127, at 137 (explaining that experimental sciences are usually molecular
sciences such as chemistry and biotechnology that do not lend themselves to
predictability because their results are often characterized by uncertainty)

[112] As per
Judge Bryson, in the US case of Phillips v AWH Corporation 415 F.3d
1303, 2005: “The claims of course do not stand alone. Rather, they are of “a
fully integrated written instrument’’…consisting principally of the
specification that conclude with claims. For that reason, claims “must be read
in view of the specification, of which they are a part”….As we stated in Vitronics,
the specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.”

[113] M
Meurer and C Nard, “Invention, Refinement and Patent Claim Scope: A New
Perspective on the Doctrine of Equivalents” (2004) 93 The Georgetown Law
Journal
1967-1975 at 1947.

[114] W R
Woodward, “Definiteness and Particularity in Patent Claims” (1948) 46(6) Michigan
Law Review
755-786.

[115] Graver
Tank & Manufacturing Co Inc v Linde Air Products Company,
339 U.S. 605
(1950).

[116] A K.
Pechhold, “The Evolution of the Doctrine of  Equivalents in the United States,
United Kingdom and Germany” (2005) J. Pat. & Trademark Off. Society
411-436

[117] UKHL
46 [2005]

[118] Cf.
Hugh
Laddie, Kirin Amgen—the end of equivalents in Europe? (2009) 40(1)  IIC
3-38.

[119] Kirin
Amgen
, note 117 , para. 80.

[120] K E
Collins, “Enabling After-Arising Technology”(2009)  34 Journal of
Corporation Law
1083-1126

[121] Ibid

[122] G.M
Whitley, A Patent Doctrine without Bounds: The "Extended" Written
Description Requirement, (2004) 71(2) The University of Chicago Law Review 617-637.

[123] Markem v
Zipher

[2005] R.P.C. 31, para.  100.

[124]  D.J
Brennan, “The Evolution of English Patent Claims as Property Definers” (2005)
4 I.P.Q. 361-399.

[125] M
Meyer, “What’s Special About Patent Citations? Differences between Scientific
and Patent Citations” (2000) 49(1) Scientometrics 93-123

[126] M S
Gupta, “Sufficiency of Disclosure in Patent Specification” (2009) 14 Journal
of Intellectual Property Rights
 307-316.

[127] 216
F.3d 1372 (2000)

[128] J.S.
Hendrickson, “
Solomon
v. Kimberly-Clark Corp.: The Federal Circuit Throws out the 112, 2 Regards
Clause with Inventor Litigation Testimony” (2001) 32 U. Tol. L. Rev. 407-450

[129] P
Koneckny , “Windfall Property Rights for the Left Out Co-Inventor Who Gets Let
into the Patent”, 16(1) Santa Clara Computer & High Technology Law
Journal
141-176

[130]Ibid.

[131] J.F Pearne
, “
Must
Each Inventor Named In A Joint Patent
Application Have Made An
Inventive Contribution to Each of the Claims Thereof ?” (1976)
58 J.
Pat. Off. Soc’y
205-236.

[132]
Ibid.

[133] Worden
v Fisher
11 Fed. 505 (E. D. Mich., 1882).

[134] Stewart
v Tenk
32 Fed. 665 (S.D. Ill., 1887).

[135]
Ibid.

[136] DeLaval
Separator Co. v. Vermont Farm Machine Co
126 F. 536
(C.C.D.Vt. 1903)

[137] Thropp
& Sons v. DeLaski & Thropp Circular Woven Tire Co
, 226 Fed. 941
(3rd Cir. 1915)

[138] Agawam
v Jordan
, 74 U.S. 583 (1868)
“…where the employer has conceived the
plan of an invention and is engaged in experiments to perfect it, no suggestion
from an employee, not amounting to a new method or arrangement which in itself
is a complete invention, is sufficient to deprive the employer of the exclusive
property in the perfected improvement. But where the suggestions go to make up
a complete and perfect machine, embracing the substance of all that is embodied
in the patent subsequently issued to the party to whom the suggestions were
made, the patent is invalid because the real invention or discovery belonged to
another.”

[139] International
Carrier-Call & Television Corp.
v Radio
Corp. of America
143 F.2d 598.

[140] General
Motors Corp. v. Toyota Motor Co
667 F.2d 504 (1981)

[141]In re
Sarett

327 F.2d. 1005, 140 U.S.P.Q. 474 (C.C.P.A. 1964).

[142]
Ibid.

[143]SAB
Industri AB v Bendix
199 U.S.P.Q. (BNA) 95, 104 (E.D. Va.
1978)

[144] W
Fritz Fasse, “The Muddy Metaphysics of Patent of Joint Inventorship: Cleaning
Up After the 1984 Amendments to s. 35 U.S.C 11” (1992) 5 Harvard Journal of
Law and Technology
153-208, at 188

[145] Mueller
Brass v Reading Industries
176 USPQ 361 (1972)

[146] Fasse,
op cit., footnote 282

[147] G
Slowinski and Z, K William, “Protecting IP in Collaborative Research”
(2008) 51 Research-Technology Management 58-65.

[148] W
Fritz Fasse, op cit. pages 201-202

[149] Ethicon
Incorporation v United States Surgical
135 F.3d 1456, 45 U.S.P.Q.2d 1545
(Fed. Cir. 1998)

[150] T
Guledjian, “Teaching the Federal Circuit New Tricks: Updating the Law of Joint
Inventorship in Patents” (1999) 32 Loyola of Los Angeles Law Review 1273-1302.

[151] Per
Justice Newman in Ethicon Incorporation v United States Surgical, note
147 above,
“The panel majority, confirming this error, holds
that Mr. Choi’s contribution to two claims means and requires that Yoon “must
now effectively share with Choi ownership of all the claims, even those which
he invented by himself.”  That is incorrect.   As I have discussed, the
law of shared ownership was founded on shared invention, a situation that
admittedly does not here prevail. Whether or not Mr. Choi is now properly named
under §116 because of his contribution to two claims, he is not a joint
owner 1 and he does not have the right to grant a license under all
fifty-five claims.   No theory of the law of property supports such a
distortion of ownership rights.  Thus I must, respectfully, dissent from
the decision of the panel majority.”

[152] Israel
Bio-Engineering Project v. Amgen
, Inc., 475 F.3d 1256, 2007. See also Lucent
Techs., Inc. v. Gateway, Inc
., 543 F.3d 710,  2008.

[153]G
Goller, “
Competing,
Complementary and Blocking Patents: Their Role in Determining Antitrust
Violations in The Area of Cross-Licensing, Patent Pooling and Package
Licensing” (1968) 50 J. Pat Off. Soc’y 723-753.

[154] Ibid
725

[155] Ibid
723

[156] Ibid
725

[157] E K
Steffe et al, “Biotech Collaborations and Maximizing Patent Protection: Two
Hypotheticals” (1999) 27(2) AIPLA Quarterly Journal 149-188.

[158] R.A.
Merges, “Brief Note on Blocking Patents and Reserve Equivalents: Biotechnology
as An Example” (1991) 73 J. Pat. & Trademark Off. Soc’y 878-888 at
878.

[159] D
Nicol and J Nielson, “Australian Medical Biotechnology: Navigating a Complex
Patent Landscape” (2005) 27(9) European Intellectual Property Review
313-318

[160]J
Bejcek, “Mergers and New Technologies” (2005) 36(7) IIC 809-835

[161] As
popularly defined by Carl Shapiro a patent thicket is "a dense web of
overlapping intellectual property rights that a company must hack its way
through in order to actually commercialize new technology". See C Shapiro,
“Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard
Setting” available at
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=273550
(last viewed on 20/11/2013)

[162] As
argued by Michael Heller and Rebecca Eisenberg “
a resource is
prone to underuse in a “tragedy of the anticommons” when multiple owners each
have a right to exclude others from a scarce resource and no one has an
effective privilege of use.” See M Heller and R Eisenberg, “Can Patents Deter
Innovation? The Anticommons in Biomedical Research” (1998)  280 Science 698-701.

[163]
Francis Bator, ‘Anatomy of Market Failure.’ (1958) 72 The Quarterly Journal of
Economics 351 (“What is it we mean by "market failure"? Typically, at
least in allocation theory, we mean the failure of a more or less idealized
system of price-market institutions to sustain "desirable" activities
or to estop "indesirable" activities. The desirability of an
activity, in turn, is evaluated relative to the solution values of some
explicit or implied maximum-welfare problem.”)

[164] J
Tresansky, Inventorship Determination, (1974) 56 J. Pat. Off. Soc’y
551-573 at 565.

[165] S
Murphy, “Determining Patent Inventorship: A Practical Approach” (2012) 13(2) North
Carolina Journal of Law and Technology
215-246.

[166]
Ibid.

[167] Trovan
v Sokymat SA
,
299 F.3d 1292, 1302 (Fed. Cir. 2002

[168] Ibid

[169]Netword,
LLC v Centraal Corp.
242 F.3d 1347, 1352 (Fed. Cir. 2001) where
it was stated that “The role of the specification includes presenting a
description of the technologic subject matter of the invention, while the role
of claims is to point out with particularity the subject matter that is
patented…..The claims are directed to the invention that is described in the
specification; they do not have meaning removed from the context from which
they arose. Thus the claims are construed to state the legal scope of each
patented invention, on examination of the language of the claims, the
description in the specification…”.

[170] European
Central Bank v DSS
 EWCA Civ 192 (19 March 2008)

[171] 
Ibid, para. 5.

[172]  Furfix
Products Limited v Harold John Andrews
O/021/98, the Hearing Officer
explaining that patents could claim matters which are not necessarily disclosed
in the specification, said“….
there is a fundamental difference to my
mind between an application which describes a particular piece of apparatus,
and an application which contains no such description, but has claims or
statements which include within their scope that piece of apparatus.”

[173] Dr
Huang v California Institute of Technology
, Case No. CV 03-1140 MRP., 2004
where it was held that “Even honest and well-meaning people might be tempted to
amplify their role in creating such an important invention: this is exactly the
concern that the corroboration requirement is designed to address…… The
requirement that testimony be corroborated is designed to ameliorate the
concern that a party describing his actions in retrospect might be tempted to
do so in "an unjustifiably self-serving manner."…. This Court must
look for corroborating evidence…..”

[174] No.
02-1109 (Fed. Cir. June 23, 2003)

[175] Falana
v Kent State University
No. 11-1198 (Fed. Cir. Jan. 23, 2012)

[176] Ibid

[177] B
Shaughnessy, “The False Inventive Genus: Developing a New Approach for
Analyzing the Sufficiency of Patent Disclosure Within the Unpredictable
Arts”(1996) 7(1) Fordham Intellectual Property, Media and Entertainment Law
Journal
147-228; See also Shering Corp v Gilbert, 153 F.2d
428 (2d Cir. 1946) which stated that
There is,
however, a practical limit upon synthesis, though the extent of that is not
fully known, for some of the new theoretical compounds might be impossible to
create, and some would be so unstable that they would disintegrate either at
once or in short periods of varying length. Moreover, while analogy is at times
useful, organic chemistry is essentially an experimental science and results
are often uncertain, unpredictable and unexpected.”

[178]N
Lissy, “Patentability of Chemical and Biotechnology Inventions: A Discrepancy
in Standards” (2003) 81 Wash. U. L. Q. 1069-1097.

[179]M
Sampson, “The Evolution of the Enablement and Written Description Requirements
Under 35 U.S.C. § 112 In the Area of Biotechnology” (2000) 15 Berk. Tech.
L.J
. 1233 – 1274.

[180]
Trevor Cook, Pharmaceuticals Biotechnology and the Law (LexisNexis,
2008) at 117-120

[181] Re
Fisher
,
166 USPQ 18 (CCPA 1970) “In cases involving predictable factors such as
mechanical or electrical elements, a single embodiment provides broad
enablement in the sense that, once imagined, other embodiments can without
difficulty and their performance and characteristics predicted by resort to
known scientific laws”

[182]Bernard
Chao, “Rethinking Enablement in the Predictable Arts: Fully Scoping the New
Rule” (2009) Stan. Tech. L. Rev. 3 (unpaginated article) 

[183]  M
Lemley and D Burk, “Is Patent Law Technology-Specific?” (2002) 17 Berkeley
Technology Law Journal,  Berkeley Technology Law Journal
1155–1206

[184]  T
Minssen, “Meanwhile on the Other Side of the Pond: Why Biopharmaceutical
Inventions that Were ‘Obvious to Try’ Still Might Be Non-Obvious – Part I”
(2010) 9  Chicago-Kent Journal of Intellectual Property 31-33.

[185] Per
Lord Walker in Synthon BV v Smithkline Beecham (2005) UKHL 59, para.
64 which states that “In the case of low-tech invention [for instance a simple
agricultural machine such as a hay rake with ground driven wheels….] the simple
disclosure of the invention will probably be enough to enable the skilled person
perform it. By contrast in the case of a high-tech invention in the field of
pharmaceutical science the bald expression of the existence of the invention
may have to be accompanied by detailed disclosure enabling the skilled person
to perform it.”

[186] Per
Jacob LJ, Markem v Zipher, para. 84: “
Nor are we
impressed by Mr Watson’s alleged unfairness. If the subsequent patent consists
of material which is not the confidential information of the former employer it
can hardly be patentable. It will be old or obvious. The former employer’s
remedy is not to claim entitlement to such a claim, but to have it revoked. The
“unfairness” only arises in relation to such a case. If the employee has taken
secret information there will be no unfairness—for the action for breach of
confidence as well as an entitlement under s.8 will lie at the suit of the
employer.”

[187] Per
Jacob LJ, Markem v Zipher, paragraph 86: “
Oddly, s.8 seems
to be drafted in the absence of any recognition of the independent action for
breach of confidence (save perhaps impliedly by reason of the s.8(7) power).
Neither counsel could explain this. The Report of the Committee to Examine the
Patent System and Patent Law (the “Banks Committee Report”, Cmnd.4407) which in
part led to the 1977 Act recommended that jurisdiction be conferred on the
Comptroller to deal with disputes about entitlement but makes no mention of the
fact that the law already provided a remedy. One thing the Comptroller’s
jurisdiction does do is to cover complicated situations where, for instance, an
invention is made partly using information in breach of confidence and partly
information added to that—where the applicant has added his own ingenuity to
robbery.”

Identifying ‘the invention’ in Inventorship Disputes

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