By Dennis Crouch
Dawson v. Dawson (Fed. Cir. 2013)
It's a fairly rare case where you sue yourself – especially when that occurs after your death. Dr. Chandler Dawson, now deceased, was a leading eye specialist and is the named inventor of the patent applications at suit in this case. While an employee at UCSF, Dawson began working on a topical azithromycin treatment for trachoma – some of Dawson's notes from UCSF include a statement that 0.5% solution might help overcome low-solubility problems. During the process Dawson sought help from folks at InSite Vision to actually make and test the treatment. And, very quickly, Dawson left UCSF and joined InSite. Later, InSite filed two patent applications naming Dawson as a co-inventor for the use of 0.1 to 1% azythromicin to treat the eye. The InSite applications were filed in 1999 and issued in 2001 and 2003 respectively. In 2007, UCSF filed two applications in Dawson's name (without Dawson's cooperation) claiming priority back to the 1999 (InSite) application date. The PTO then declared two interferences. There is a fairly substantial amount of money at stake because the patents are listed in the Orange Book as covering ophthalmic drops known as AzaSite. An infringement lawsuit is pending between InSite and Sandoz. See InSite Vision Inc. v. Sandoz, Inc., Civil Action 17 3:11-cv-03080-MLC-LHG (Complaint filed: 26 May 2011).
So, this case is largely a battle over patent ownership and that ownership depends upon whether Dawson's conception of the invention occurred early (while an employee at UCSF) or later (while an employee at InSite). The doctrine of conception has remained fairly steady for the past 120+ years requires proof of 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." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) (quoting Robinson on Patents (1890)).
UCSF as Junior Party: In interference cases (and in future derivation cases) the most important factor is often designation of the "senior" and "junior" parties. Normally, the Senior Party is the party with the earliest effective filing date and the interference (derivation) begins with a presumption that the senior party wins unless unseated by the junior party. Here, we have a filing-date tie because applicants claim priority to the 1999 application date. However, the PTO has a longstanding practice of breaking that tie by saying that the junior party is the one with the latest filing date for its involved application. The UCSF actual application was not filed until 2007 and is thus the junior party.
In the interference, the PTO Board concluded that UCSF had failed to prove Dawson's conception while at UCSF. In particular, the Board held that Dawson "did not fully appreciate how [his] idea was to be implemented in actual practice. . . . What emerges from the facts of this case is that [while at UCSF] inventor Dawson had a general idea for a future research plan to come up with a composition for topical azithromycin to be applied to the eye to treat infection."
On appeal, a divided Federal Circuit has affirmed – holding that substantial evidence supports the Board's conclusion that the invention claimed was not conceived by Dawson as of that early date. The court did suggest that Dawson's lack of testimony in favor of UCSF was a critical factor in its decision.
No Patent Rights to Pre-Conception Innovations: An important take-away from the decision is that the prior employer has no patent rights associated with ideas and innovations that fail to rise to the level of inventive conception. Although this could likely be cured through particular contract language regarding ownership of further developments stemming from work began at the prior employer. This case puts power in the hands of entrepreneurial employees who are not bound by strong contractual limitations on their post-employment activities or patenting.
Writing in dissent, Judge Reyna argued that Dawson's conception occurred while at UCSF. In particular, Reyna walked through the evidence showing that Dawson had conceived of the a process for applying an effective amount of azithromycin to an eye to treat infection in a way that fit the interference count.
Inventorship is perhaps the most fundamental question in patent law. The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude. . . .
The majority discounts Dr. Dawson's work at UCSF as failing to achieve a fully developed idea of the invention. This conclusion reflects a misapplication of the law of conception to the facts of this case. To demonstrate conception, the law does not require that Dr. Dawson develop a working physical embodiment of his innovative idea. Indeed,
Invention is not the work of the hands, but of the brain. The man that first conceived the complete idea by representing it on paper, or by clear and undisputed oral explanation, is the first inventor, and to avail himself of the rights or priority the law only requires that he shall use due diligence in embodying his idea in a practical working machine. The sketch need not be a "working drawing." The conception may be complete, while further investigation, and perhaps experiment, may be necessary in order to embody the idea in a useful physical form.
Edison v. Foote, 1871 C.D. 80 (Comm'r Pat. 1871). While conception thus requires "the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention," Mergenthaler v. Scudder, 11 App. D.C. 264 (D.C. Cir. 1897), it does not require reduction to practice. The point of time at which an invention merits protection under the patent law is neither when the first thought occurs, nor when a practical working embodiment is completed. Rather, conception occurs
when the 'embryo' has taken some definite form in mind and seeks deliverance, and when this is evidenced by such description or illustration as to demonstrate its completeness. It may still need much patience and mechanical skill, and perhaps a long series of experiments, to give the conception birth in a useful, working form. The true date of invention is at the point where the work of the inventor ceases and the work of the mechanic begins.
Cameron & Everett v. Brick, 1871 C.D. 89 (Comm'r Pat. 1871). Here, Dr. Dawson's WHO presentation manifested an inventive embryo which thereafter sought deliverance. In his presentation, he provided a description sufficient to illustrate the completeness of his invention. All that was left was the work of the mechanic—that is, reduction to practice. This Dr. Dawson was not required to do.
Responding to the dissent, the majority suggested that the outcome turns on the standard of review since the Board's factual determinations are affirmed based upon the very low standard of substantial evidence. See In re Gartside, 203 F.3d 1305, 1311-15 (Fed. Cir. 2000). The appellate panel does not deal with the reality that conception is a question of law presumably reviewed de novo on appeal other than its fully unsatisfying statement that "UCSF failed to meet its burden of proof as to the legal issue of conception." I ask the court – What is the burden of proof for questions of law?
Agreed – timing (limited times) and type (exclusive) are directly written into the constitution.
Anon, their power is not unlimited.
Sent from iPhone
Have you nothing else to do?
I thought I might agree with you but it wasn’t clear to me what “type of thing” you were referring to. Were you referring to just the specific facts of this case? Or issues involving inventorship generally?
Are you suggesting that anyone can file a continuation application, ‘borrow’ the original oath, and then try to fight for ownership? Seems like an abuse of process that the Board simply should have kicked out, and that the CAFC should have denied for lack of standing
I agree. I don’t think the InCite case should ever have gotten out of initial examination. I think anyone who’s practiced for a long enough time has run into similar issues where the USPTO did its job and did not relent (i.e., refused to move forward without the proper paperwork).
Yet another vacuous comment Malcolm.
Have you nothing else to do?
I mean, at all?
Did Francis leave you?
Better trolling please.
the Office itself seems not to know how to have properly proceeded in this type of thing.
What “type of thing” are you referring to, anon?
I can’t miss the points you don’t make.
I do wish Reyna had used the word “pirate” in his sentence that spans pages 10 and 11 of his dissent.
…and your point is…?
(and please don’t tell me that a minority view is the holding of the case when it is not even very compelling dicta**)
**even as I mention this for contrasting effect, I actually like Reyna’s writing – but it’s not the law.
Quite misses the point Ned.
The clause is an allocation of power, not a command that that power MUST be put into play (by Congress).
IF Congress does (and of course we can agree that they have) put this power in play, THEN – but only then – does your statement reach.
But let’s also not forget that Congress has the power to define what “inventor” means. They have FULL power to set the rules of the race. Again, I invite you to revisit Golan v Holder to see just how vast the power is that has been given to Congress.
anon, I think Dennis made the point, and see fn. 1, that the majority was only deciding that the Board’s findings of fact and conclusions of law were supported by substantial evidence.
Reyna would have, I think, held they were not.
FN1: “The issue of conception turns in large part on the facts, and we review the Board’s many factual findings in this case for substantial evidence. In re Gartside, 203 F.3d 1305, 1311-15 (Fed. Cir. 2000). In addition, we are required to assess the Board’s findings and its ultimate legal conclusion in light of the burden of proof, which rested on UCSF. As such, we “conclude” only that substantial evidence supports the Board’s relevant factual findings and that the Board did not err in holding that UCSF failed to meet its burden of proof as to the legal issue of conception.”
anon, “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”
The way I read this, Congress has no power to grant patents to anyone who is not an inventor, or his privy.
Ned,
See my 1:36 PM post above (I think you will enjoy the vintage).
“InSite did nothing inventive at all.”
You are with Reyna on this. However, the majority saw it that Bowman was a co-inventor and that hte invention did in fact require InSite.
“Given an obligation to assign”
As mentioned, assuming facts not in evidence. Why not assume the other way?
Again, please re-read what Stanford v Roche actually held.
Constitution only delegated which branch of government had the power to set patent law (not the judiciary, btw) – it did not say THOU SHALT HAVE PATENTS.
“that he had no right to assign it to InSite”
Assuming facts not in evidence, Ned.
And your reading of Stanford v Roche is WAY off (hint: read it again and see who won).
Did you read the case yet, MaxDrei? The majority spells this out.
In the joint inventorship thread I was rambling on about:
“….separate strictly issues of ownership from issues of inventorship……”
So, Ned, it is nice here to see you latching on to ownership issues. I’m hoping your comments will attract an intelligent (and intelligible) reaction.
I made the point below that I think that even if Dawson is only a co-inventor, his portion of the invention was owned by the U and that he had no right to assign it to InSite. InSite is also, under these circumstances, not a BFP according to the recording statute.
I think, based on Stanford v. Roche, that InSite’s patent is unenforceable without joining the U. No standing.
Malcolm, the founding fathers believed the constitution required that only an inventor receive a patent. Thus 102(f), or its equivalent) has long been the law.
I would hope you would agree with at least this much.
I think Dr. Dawson conceived of the invention while at the U, and that that invention was reduced to practice by the U. InSite did nothing inventive at all.
But, even assuming that the operative part of the invention was made by co-inventor Bowman of InSite and not by the U’s Dr. Chern who made the claimed topical treatment and actually tested it on himself, it is clear to me that Dr. Dawson’s contribution was invented while he was at the U. Given an obligation to assign, the U clearly is a co-owner even despite this decision.
I would think, given Stanford v. Roche, that any infringement defendant should bring up standing as a defense if only InSite is the named patent owner.
Help me will you Units. In what sense had he not “conceived” the subject matter to be claimed. As I understand it, what he needed Insite for was to make and test his already fully conceived invention. What conception do you have of the act of conception? It must be different from mine.
actually this is a paraphrase of John Marshall
Okay. It’s still wrong.
That hypothetical didn’t preclude “Alfred” from filing an application to claim his invention (a coating without a buffer) by himself. The present case suggests a slightly different fact pattern: Dawson at UCSF apparently had not yet fully conceived of an invention and therefore could not have obtained a patent on broader claims that omit InSite’s contributions.
MM, actually this is a paraphrase of John Marshall, who said something to the effect that one an inventor has made an invention, he has a right to a patent against later inventors as a matter of the law and as a matter of a constitutional right.
I’m grateful for that nudge IANAE. And there was me, supposing that the “Joint Inventorship” thread was all about the role of the claim in defining the subject matter on which the inventorship debate must focus (rather than the key importance to the outcome of the conception of “conception”).
BTW, the UC case is 11/801345.
Dawson at UCSF (Alfred) comes up with an idea. He communicates it to Dawson at InSite (Beatrice), who further refines the idea.
I have to admit that I still haven’t figured your comment out. Maybe too subtle? Or maybe I should just go home and have a beer?
Yikes. Is NAL now on the Federal Circuit?
Wow. Is there any point you can’t miss?
It’s possible, too, LB, that the claim UCSF copied was the same or substantially the same as a claim presented in the originally filed application (to which they claimed priority).
Reyna: The instant an inventor conceives her invention is the moment in which vests her right to a patent, thus perfecting her constitutional right to exclude. . . .
Uh … the US Constitution does not provide inventors with a “right to exclude” others from practicing their invention.
Geebus.
Try reading the case IANAE – the co-inventors under discussion are Dawson and Bowman.
This is contrasted with Dawson (alone) and earlier.
I understand that the application has an effective filing date back to 1999, but we’re supposed to read “such claim is made” to refer to an effective filing date? That seems like a stretch.
I seem to recall that the time limit does not apply to applications with effective filing dates earlier than the issued patent. Maybe I’m misremembering?
I wonder if Dawson and Dawson could be considered co-inventors. Didn’t we just have a hypothetical suspiciously similar to the facts of this case?
Italics tag off.
EG,
This is a bit ancient…:
It has been uniformly, and we believe correctly, held by the Patent Office that interferences are declared between applications rather than applicants, and that they are intended to disclose and determine which invention was first produced, not who has the title.
Lattig v. Dean, 25 App. D.C. 591, 595-596 (D.C. Cir. 1905) citing Hicks v. Keating, 40 Off. Gaz. 343.
LB, trust me, I am having a hard time understanding how a prior conception is prior art to an inventor's own reduction to practice.
K,
I think you are mistaken.
I reference 35 U.S.C. 135–Gateway to Priority and Derivation Determinations by the BPAI publlished in 2010 Emerging Issues 4901, by W Todd Baker:
The CCPA concluded in Corbett that the intent of Congress, regarding the above quoted statute, was to enact a statute of repose for issued patents. The statute was to be a “statute of limitations” on interferences, so that the patentee might be more secure in his property right. In 1952, 35 U.S.C. § 135(b) was codified in the language that is now in 35 U.S.C. § 135(b)(1) with no substantial shift intended by the changes in statutory language.
Corbett – 568 F.2d 759
See also Chapman v. Wintroath, 252 U.S. 126
UCSF claimed the benefit of the filing date of an issued patent. I hardly think they wanted that patent invalidated. They would then lose, I think, their own filing date.
Of course they wanted that patent invalidated. That’s what they filed the interference proceeding.
Why would they lose their filing date, Ned? The fact that claims of a patent are invalidated over prior art doesn’t make the original application go away, and doesn’t affect the priority dates for continuations, divisionals, etc.
“I’m not sure how they finessed the power of attorney – I guess they had an employment agreement with Dawson that they could use as an assignment.”
That’s just it – the chain of title does not reflect this. At all.
There is NO assignment on record to UCSF.
The oath for the child application ONLY references the oath of the parent (with BOTH inventors) and makes NO disclaimer of the ‘extra’ inventor.
The only power of attorney on record appears to be on eadding another practitioner, and is not signed by either the inventor, anyone in the chain of title, or even by UCSF.
The (second) oath is signed by someone named Joel Kirschbaum uner the typed named of the first inventor.
I know that interferences are rare (and thus lean toward’s EG’s expertise), but the Office itself seems not to know how to have properly proceeded in this type of thing.
“includes the magic words”
Thanks, I am very well aware of that (you might check the archives for the Stanford v Roche discussions). In part, that is why I stated “I would love to see the details of any such onbligation assignment”
LB, huh?
UCSF claimed the benefit of the filing date of an issued patent. I hardly think they wanted that patent invalidated. They would then lose, I think, their own filing date.
If you can explain this, please do.
It was an interference, Ned. If UCSF had won, the Insite patents would have been invalidated, and two new patents would have issued to UCSF.
EG, if UCSF had won, would the board have simply ordered the correction of inventorship of the issued patents on motion? How would UCSF then perfect its ownership of the issued patents?
Are you suggesting that anyone can file a continuation application, ‘borrow’ the original oath, and then try to fight for ownership? Seems like an abuse of process that the Board simply should have kicked out, and that the CAFC should have denied for lack of standing (notwithstanding EG’s comment).
I don’t think the suggestion is that just anyone can do it. But I guess you can do it if one of the inventors used to work for you and you can plausibly claim that the subject matter you’re claiming in the continuation application was his work alone. If I understand it correctly, that’s what happened here, and they convinced one judge on the Federal Circuit.
I’m not sure how they finessed the power of attorney – I guess they had an employment agreement with Dawson that they could use as an assignment.
anon, regarding an “obligation to assign,” the Federal Circuit says that a pre-invention agreement is an assignment (not an obligation to assign) if it includes the magic words “hereby does assign”.
Huh. Section 135(b)(1) says that “A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such claim is made prior to one year from the date on which the patent was granted.” I understand that the application has an effective filing date back to 1999, but we’re supposed to read “such claim is made” to refer to an effective filing date? That seems like a stretch. I presume there is case law on this?
There was initially a statutory DP rejection maintained through final rejection, and then it seems the examiner called the attorney to inform them that an interference would be declared. No reason was given on the record for why there was an interference instead of continuing to maintain the double patenting rejection.
See comment below to J.
Thanks EG.
As to proper, timing of conception – of the identical party seems like an improper use of interference.
Granted, the parties are in fact not being claimed to be identical (and Reyne stresses that point), but you still have an oath issue as I mention below.
as to 37 CFR 1.47, from the facts listed, this cannot apply (“refuse to execute an application for patent, or cannot be found or reached after diligent effort“) as the facts indicate that NO effort at all was made to have the inventor sign an oath or contribute to the prosecution (but I may be off on this).
Still puzzled (just a bit) – even filing as a continuation, how does UCSF legitimately do the filing?
1) The parent application was not only filed with the oath, that oath was from both joint inventors (and UCSF claimed only one inventor – aren’t they estopped from disclaiming the second inventor if they are relying on the original oath?)
2) The parent application was also assigned to InSite. UCSF was outside of the chain of title when it filed – even if it filed a continuation application (of course, I would love to see the details of that assignment).
Are you suggesting that anyone can file a continuation application, ‘borrow’ the original oath, and then try to fight for ownership? Seems like an abuse of process that the Board simply should have kicked out, and that the CAFC should have denied for lack of standing (notwithstanding EG’s comment).
EG, don’t you need more than an argument regarding an obligation to assign to create standing (of course, I would love to see the details of any such obligation agreement)?
Thanks K.
Doesn’t that eviscerate the law?
Thanks J.
The case was filed as a continuation claiming priority to the original. You don’t need a new oath for a continuation.
There were continuations to the original case still pending. UCSF was able to file a continuation of a pending case and claim priority to the original. Given it the same effective filing date as the original and thus ducking the time limit.
Excuse me, I meant to say “an interference proceeding is not ONLY proper.”
“EG, can you comment as to the “appropriateness” of this dispute proceeding under the guise of an interference?”
Not sure if I understand exactly what the question is you’re asking, anon. As far as determining whether conception occurred while at UCSF or later at InSite, an interference proceeding is not proper, but often used to sort out such issues, even if ultimately the question is who gets to own the patent.
If your question relates to the standing UCSF to bring suit, USCF could, under 37 CFR. 1.47(b), file the Declaration on Dawson’s behalf (arguing that Dawson had an obligation to assign to USCF) to at least get the patent application filed and then proceed to the interference on that basis.
good point Leopold.
I thought there was a time limit to provoke an interference, per 35 USC 135 (b)(1). Why didn’t that apply here?
anexaminer – the claims and even the specification were a direct copy, expressly done in order to invoke an interference.
While your question sounds similar to mine, your basis is quite mistaken.
Interesting,
EG, can you comment as to the “appropriateness” of this dispute proceeding under the guise of an interference?
While I do see a distinguishing factor in a second inventor being named (in response to Ned Heller’s post ar 6:12 PM), I am having trouble seeing how the court (even an article I court) granted standing to UCSF, as they had no effective oath or declaration (and from the case, never even bothered to attempt to enlist the actual inventor to their cause – even if it be just a single inventor).
This leads me to chuckle at the comments of Judge Reyna, which reverse the table of the typical “troll” pejoratives lobbied at non-practicing entities. See pages 10 and 11 of the dissent, which culminates in “invite mischievous entities to lay hidden along the pathways of discovery, and to waylay industrious and deserving inventors, by laying claim to their ingenuities through commercialization.”
A sword to pierce the SHIELD: those commercializing are the ones who are victimizing the industrious inventors.
Why did this even go to interference? Not sure the case number so can’t look it up. But there should have been a 101 DP or at least an ODP rejection. For the claims to be similar enough to have interference they must be similar enough for some type of DP rejection.
Since it has different assignees they couldn’t file a TD (In re Hubbell).
🙂
Dennis,
What you see in this Dawson case is a thinly veiled inventorship/ownership dispute dressed up as an interference. Up until the AIA did away with interferences as of last year, a very common way that such disputes were resolved. The first case I ever saw my dad argue before the CCPA was such a case (Sheffner v. Gallo,315 F.2d 1169 (CCPA 1975)).
Hehe…. UCSD filed a petition to make special based on the inventor’s age.
How is this even possibly a derivation case where the same named inventor is named on both applications?
Dennis, I agree that the legal conclusion based on the facts as found by the Board should be de novo.
I was asking myself, why an interference? Why not simply sue InSite for an assignment based upon its equitable ownership of the good Doctor’s invention?
Then I thought further: California has a 4 year statute of limitations for breach. The first patent issued in 2001, placing the U on notice. Their suit was barred in 2005.
There is precedent for suing one’s self (but not successfully):
Lodi v. Lodi, 173 Cal. App. 3d 628 (1985)
link to danfingerman.com
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