Plaintiff's request to add additional inventors under §256 is denied
Vanderbilt University v. ICOS Corporation, Civ. No. 05-506-SLR, January 27, 2009.
Robinson, J. Court denies plaintiff’s request to add its scientist employees as inventors to the two patents-in-suit assigned to defendant.
Plaintiff brings this §256 action against the defendant seeking to add three scientists employed by plaintiff as co-inventors of defendant’s patents-in-suit. The Court holds that conception of a chemical compound requires conception of the specific compounds being claimed with all of their component substituents. Plaintiff’s purported contribution constitutes no more than a specific portion of a claimed compound. There is no evidence to suggest that the claimed inventors communicated to defendant a compound of general structure of the patents-at-issue. Because there is no evidence that the claimed inventors conceived of the specific structure of the compound claimed or the compound with all of its components, or communicated that compound to defendants, plaintiff has failed to demonstrate by clear and convincing evidence that the claimed inventors are co-inventors of the patents-in-suit.
