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Guest Commentary: So you want to collaborate?
March 2012
SHARING OPTIONS:
By Thomas W. Banks and Ian Y. Liu, Finnegan
On Nov. 28, 2011, the University of Cambridge and Elan Corp.
launched the Cambridge-Elan Center for Research Innovation and Drug Discovery.
This came on the heels of several other pharma-academic alliances, including
Eisai Co. Ltd. and Johns Hopkins University, Gilead Science and Yale School of
Medicine, Sanofi-Aventis and Columbia University, Sanofi-Aventis and Harvard
University, Sanofi-Aventis and the University of California San
Francisco
(UCSF), Pfizer and UCSF, Bayer Healthcare and UCSF and GlaxoSmithKline and
Harvard University.
The goal of these collaborations is to bring together the
most brilliant minds in industry and academia to discover a new wave
of
pharmaceutical drugs. While exciting and promising, such collaborations have
the potential to spawn contentious disputes that can lead to costly
litigation
or arbitration.
Consider the following hypothetical. Pharmaceutical Company
("Pharma")
collaborates with Research Institute ("Institute") to develop a drug
("Licensed Product"). The parties' agreement provides that Pharma pays
Institute a 1-percent royalty on sales of the Licensed Product if it is covered
by Institute's know-how, a 2-percent royalty if the Licensed Product is
covered
by a patent co-owned by Institute and Pharma and a 3-percent royalty if the
Licensed Product is covered by a patent solely-owned by Institute.
The agreement also provides that the party owning a patent
application has the right to control its prosecution (the communications with the
Patent Office regarding the patent application). Thus, Pharma and Institute
jointly control prosecution of co-owned patent applications.
Institute hires a postdoctoral research assistant
("Post-doc"), who agrees to assign his invention to Institute.
Post-doc
discovers a new method of making a new family of chemical compounds, makes one
compound and leaves Institute for a permanent position. Post-
doc's method and
compound are reported to Pharma in a weekly report.
Learning of Post-doc's method, a Pharma
scientist
("Scientist") makes a new compound using Post-doc's method. Scientist duly
reports his results to Pharma's patent department, triggering
the following
analysis:
To patent this new family of compounds, there are two
competing
options: (a) claim a broad genus of compounds that includes both
Post-doc's and Scientist's compounds, or (b) claim a narrower genus that
includes
only Scientist's compound.
Option (a), the broad genus, prevents others from making,
using or
selling any compound within the claimed genus. However, under option
(a), Post-doc would be a co-inventor of the patent and, because Post-doc
assigned
his rights to Institute, Institute would be a co-owner of the patent.
Thus, Pharma and Institute would (1) share control of prosecuting the patent
application(s) and (2) Pharma would pay Institute a 2-percent patent royalty
even if only Scientist's compound makes it to the market.
Option (b), the narrow genus, provides several advantages to
Pharma. The narrower patent is more difficult for
third parties to invalidate.
Moreover, disclosing but not claiming Post-doc's method and compound in the
patent excludes others from using Scientist
's compound but does not exclude
Pharma from using Post-doc's compound. Under this option, Pharma is the sole
owner with complete control of the
patent application and pays Institute only a
1-percent royalty if Scientist's compound makes it to the market.
Institute could challenge inventorship of the resulting
patent if Scientist's compound makes it to the market. Institute would argue
that
(1) Post-doc provided the method of making Scientist's compound and thus
is an inventor, and (2) Institute, a co-owner of the patent through Post-doc's
assignment, should get the higher royalty. However, Institute would face an
uphill battle for at least two reasons. One, inventorship of an issued
patent
is presumed to be correct. Thus, Institute would have to prove that Post-doc is
an inventor by clear and convincing evidence, a difficult
threshold to meet.
Two, inventorship is determined based on the claimed invention, and Post-doc's
method and compound are not claimed in the patent.
For Post-doc to be an
inventor, Institute would have to convince a court or arbitral panel that
Post-doc's method was a significant contribution to
the claimed invention.
Pharma chooses to purse option (b). A patent is issued
claiming the narrow genus
of compounds and disclosing Post-doc's method of
making the claimed compounds. For good measure, a paper coauthored by Post-doc
and Scientist is
published, crediting Post-doc for both his and Scientist's
compounds. Presumably, all are happy? Not so fast.
Scientist's compound makes it to
the market. When Institute
learns that Post-doc is not named as an inventor of the patent, and thus
Institute is not a co-owner and does not get the 2
-percent royalty, Institute
sues Pharma. A costly litigation ensues. Pharma argues that Post-doc is not an
inventor because his method was publicly
known and his compound was not claimed
in the patent.
Institute presents evidence showing (1) that
there was a
collaboration between Pharma and Institute, (2) that Post-doc told Pharma his
method of making the compounds, (3) that both the method and
the genus of
compounds are new and patentable, (4) that Pharma's patent claims a subset of
the new compounds and (5) that Scientist made his compound
by using Post-doc's
method.
The court rules that Post-doc is a joint inventor because he
made
an inventive contribution to the method of making the claimed compounds,
even though Pharma's patent does not claim Post-doc's method or compound.
Accordingly, Institute becomes a co-owner of the patent through Post-doc's
assignment.
Angered by
Pharma's actions of disclosing and disclaiming
Post-doc's invention without permission, co-owner Institute refuses to give its
necessary consent to
Pharma to enforce the patent against infringers, alleging
that Pharma breached the contractual duty to cooperate. Without Institute's
consent, Pharma
no longer has the ability to sue others. Another costly dispute
ensues.
It may seem that these disputes
could be avoided by pursuing
option (a). However, the outcome of inventorship disputes is notoriously
unpredictable. The odds are against the party
challenging inventorship because
that party must prove its case by clear and convincing evidence. A thorough
understanding of the nuances of U.S.
inventorship law is, thus, crucial from
the outset of a collaboration.
The recently enacted
America Invents Act ("AIA") makes
numerous changes to the U.S. patent system, but leaves inventorship law largely
unchanged.
Joint inventorship of a U.S. patent exists when two or more
individuals contribute to the conception of an invention claimed by the patent.
A
joint inventor need not work in the same physical space or at the same time
as the other joint inventors, but must contribute in some significant manner
to
the invention. Suggesting what was already well known in the prior art is not
an inventive contribution, nor is the mere act of reducing another's
conception
to practice if the party applies only ordinary skill to optimize certain
aspects of the invention.
In the above hypothetical, Post-doc's inventorship is based
on his contribution to both the new method and new compound. However, if a
compound similar to Post-doc's or Scientist's compounds was previously known,
Post-doc's method, even if novel, might not entitle Post-doc to joint
inventorship. In this scenario, the existence of a similar compound in the
public domain might make Post-doc only an inventor of his own compound, not
the
claimed genus of compounds. Without more, Post-doc's contribution to a method
of making Scientist's compound may not be enough to make Post-doc
an inventor.
For one to be a joint inventor, there must be some element
of joint collaboration.
In the above hypothetical, Scientist seeing the weekly
report on Post-doc's method and compound and building upon it is likely
sufficient to establish
the required joint collaboration. If, however,
Scientist independently invented the new compounds, tested his idea with
Post-doc's compound, and made
his own compound, Post-doc's report to Pharma
might not be enough to satisfy the joint collaboration requirement to make
Post-doc a joint inventor.
Another potential thorny issue in collaborations is the
interplay between inventive contribution
and patent ownership. As discussed,
there is no minimum quantity or quality of inventive contribution required of a
joint inventor. Yet, a joint
inventor is an owner of an undivided interest in
the entire patent. In other words, a joint inventor, even if his contribution
is minor but legally
"significant," is a joint owner of the entire patent.
This can create serious problems. Because so
much depends on
patent ownership, a party making a somewhat minor but still legally
"significant" contribution to a patent can alter the ownership
and upset the
tenuous balance of control and compensation set forth in the parties'
agreement. Under the specific circumstances here, Pharma's broad
disclosure and
narrow claiming causes considerable uncertainty, making it difficult for the
parties to reach a reasonable resolution without litigation
or arbitration.
By combining their ingenuity in a collaboration, industry
and academia, for better or
worse, become partners with both shared and diverse
interests. As a result, the already complex inventorship matrix is made even
more challenging.
Nevertheless, there are some things that can help make this
journey successful. A healthy collaboration depends on (a) properly determining
patent
inventorship and (b) fairly rewarding contribution.
To properly determine patent inventorship, the
following
questions must be frequently asked, answered, and revisited: What was invented?
Who invented what? With whom? To what extent did one
communicate to the other?
What was disclosed? To whom?
To fairly reward contribution, the following topics must be
addressed: How much did
each contribute? How can the invention be most
effectively protected? How can each party's contributions be properly rewarded?
While there is no sure-fire way to completely eliminate
disagreements between scientific collaborators, following the
author's
suggestions will go a long way toward minimizing costly and disruptive disputes
and better enable the parties to focus on scientific and
financial matters,
rather than legal issues.
Thomas W. Banks is a partner
and Dr. Ian Y. Liu is
an associate in Finnegan's Cambridge, Mass., office. With
more than 375 intellectual property lawyers, Finnegan is one of the largest
intellectual
property law firms in the world.
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