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« Pfizer Enters Agreement to Acquire Coley Pharmaceutical Group | Main | A Simple Question about Patent Quality »

November 19, 2007

Comments

For completeness, inventorship determinations should be revisited when the Notice of Allowance is received. Each named inventor needs to have contributed to at least one claim that is to issue.

Although there is often no difference, there can be differences in certain cases, e.g., when there is a restriction requirement.

Absent any intent to deceive the patent office, what is the downside if someone is listed on the patent who didn't "really" invent a part of the final claim set? Specifically, say the lab technician is listed as an inventor but it turns out s/he only followed directions, and they are under a duty to assign the invention to the company - I don't see how that would make the patent any less enforceable. What am I missing?

As long as there is no deceptive intent, there are ways to correct inventorship errors. Listing someone who shouldn't be is not generally as big a problem as omitting someone. However, see Yeda Research v. ImClone, where the inventors named on ImClone's patent were not the actual inventors. In addition, correctable inventorship mistakes can still cause a lot of headaches. Several reasons for avoiding such mistakes are nicely described in the following article by Degnan and Huskey of Holland & Hart: http://www.aipla.org/Content/ContentGroups/Speaker_Papers/Annual_Meeting_Speaker_Papers/200618/DegnanDOC.pdf.

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