Two doctors sued The General Hospital Corp. seeking under 35 U.S.C. § 256 to be added to two patents related to the discovery of a particular genetic mutation associated with Familial Dysautonomia. Judge Casper granted summary judgment for the defendants because § 256 was inappropriate to grant the remedy sought by the plaintiffs. The plaintiffs could not be added as co-inventors because they fell short of meeting the clear and convincing burden to prove their co-inventorship. Specifically, there was no proof that the plaintiffs collaborated with the named inventors, a requirement of joint inventors. The proper action was a determination of priority in an interference proceeding pursuant to 35 U.S.C. § 135 and thus the claim under § 256 was dismissed.
This case has a nice rundown of how different cases have used § 256 to deal with inventorship issues, both with collaboration, and without.
Rubin v. The General Hospital Corp., 09-10040-DJC (D. Mass. Apr. 28, 2011)
Comments