Inventorship and Authorship

Author of Module:

Dr. George Sausen
Director of Intellectual Property.
Cephalon, Inc.

Understanding the difference between inventorship and authorship will prevent common misunderstandings which often confuse and annoy young industrial scientists. These misunderstandings can seriously interfere with the open and free collaboration (teamwork) needed for success in industry.

Authorship is interpreted in industry in much the same way as in academia. The only difference is a tendency to be more inclusive, in the list of authors, of anyone who contributed in any significant way. Contributors who may be given an acknowledgment in the paper in the academic lab, may be included as authors. Practices may vary among labs within a company.

Inventorship, on the other hand, is a legal concept only partly coincident with the individuals who contributed intellectually to the invention. In a typical industrial lab, inventorship will be assigned by the Legal Department primarily on the basis of the written documentation in the case. The inventor(s) is the person who conceived of the invention, and recorded the concept. The inventor may or may not be the person who carried out the experimental work.

Inventorship is often viewed by the scientist who has recently come from academia as essentially the same as authorship. This misunderstanding is what lies behind the feelings of injustice which can sometimes arise from not being included as an inventor.

This module is a case history based on a realistic situation in the research labs of a pharmaceutical company.

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XYZ Company has a research project on discovery of new protease inhibitors of key enzymes in the body's blood pressure regulating system. Barb, a synthetic chemist, believes that attachment of selective electron withdrawing groups to certain amino acids may increase potency and decrease side effects. Based on known synthetic methods, she outlined to the scientist, Pete, working with her, a procedure for attaching such groups to their "key molecule".

Pete began the synthesis, but he found that higher temperatures and a different aromatic solvent gave improved reaction times, and the product was more readily separated from solution.

Barb and Pete sent samples of the novel compounds to the biochemistry group and asked both Dana and Shirley to test the compounds for enzyme activity by the published procedure Dana had designed earlier at the Beta Company.

The compounds were biologically active, and Barb submitted a patent proposal to XYZ's patent group.

The proposed claims would include

1) claims to the novel compositions, and

2) claims to use of the compositions as protease inhibitors.

 

The questions for the class:

1) Who is/are the inventor/coinventors?

2) When this work is published, who do you think should be authors on the papers?

 

Background for discussion

Barb is the sole inventor because she described the structural concept, including a valid synthetic approach, and suggested the use of the proposed compounds. Pete's improved process is not relevant to inventorship because the process is not included in the proposed claims. If Pete's process appears to be an optimum one, he would be expected to independently submit a patent proposal for the synthetic route.

Dana and Shirley are not inventors because they did no more than follow Barb's directions and applied a known method. The fact that Dana had developed the method earlier is irrelevant to this case; it had already been published and had been developed at another company. Either the Beta Company had chosen not to patent it, or the XYZ Company is paying a royalty for its use.

Authorship will be decided by the scientists. Company practices may often control what is done. Some companies tend to include anyone who had any connection with the work. Such a lab may choose to include all four workers as authors. Academic readers often complain that the overly long lists of contributors is unrealistic, and does not convey the identity of the true authors.

A possibly more correct solution would be for Barb and Pete to author the paper and include an acknowledgment to the help of Dana and Shirley.

Extend the case history:

Suppose that instead of using a published procedure, a new biological procedure had to be developed to successfully assay the compounds. Would this change the inventorship situation?

In this case, the new assay is critical to demonstrating the utility. Dana and/or Shirley would be inventors depending on their relative contributions to the assay. They would, in this case, certainly be included as authors.

Extend the case history again:

Suppose Joe, another biochemist, suggested the compounds might also be active as antiviral agents, and he found that they were active. Would Joe be an inventor? (Of what?)

If the first patent application had been filed, Joe would submit a proposal for a patent claiming the use of the compounds as antivirals. If the suggestion was made while Barb's work was underway, the patent application could be expanded to include the additional utility. In this case Joe would be a coinventor.

There may be reasons to want to divide the patent into two cases. For example, suppose XYZ Company has a research collaboration with a partner to develop novel compositions with utility as protease inhibitors for selected enzymes, and any patents based on the work would be jointly owned. Any other utilities belong solely to XYZ Company.

Thus use of the compounds, e.g. as antiviral agents, should be separately patented since XYZ might decide to partner antiviral development with a third party. Alternatively, they might decide to proceed separately in the US and form another partnership for European development.

If Joe's invention were the subject of a second patent, that patent would be "dominated" by the first. This means that the second patent could not be practiced without the permission of the holders of the first patent, since they have rights to the compounds. When both patents are held by the same company this is a moot point. However, if Joe worked for ABC company, and filed for this patent (after the first patent issued), ABC Co. would have to come to an agreement with XYZ Co., and probably pay a royalty if it wished to manufacture the compound for use as an antiviral.

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© George Sausen 1997

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