First of all, before referring to the Ethicon vs. United States Surgical Corp. case, to the implications that this case brought about in the US jurisprudence and the problems regarding inventorship and ownership of patents, we need to clear up some of the terms we will be referring to, to clearly make distinctions between the terms we will be handling in this analysis. The most important issue we need to point out at this moment is that “inventorship and ownership of a patent are separate and distinct issues” .Following the Ethicon case, this has been pointed out by several judicial theoreticians.
As such, “inventorship is a legal concept that is based upon who meets the requirements to be an inventor” , while ownership “relates to who actually owns the legal rights associated with the patent” . Logically speaking, this distinction makes sense. It is obvious that we have situations when the inventor is working for a company or an organization, which will subsequently have the rights to use the invention.On the other hand, we often have situations when an organization will purchase the right to use the invention, namely the ownership over the respective invention. We are often in a condition where the corporation or the organization owns the legal rights to make use of the patent. The Ethicon vs. US Surgical Corp.
legal case resulted from this very situation: the difficulty in determining whether the rights over the patent are with one or the other of the companies. The case line is quite simple. Dr. In Bae Yoon granted an exclusive license over the invention patent to Ethicon.The company filed suit against US Surgical for infringement on several of the patent’s claims (namely claims 34 and 50). US Surgical discovered, however, that Yoon had worked with Mr.
Young Jae Choi, who laid claim on parts 33 and 47 of the invention. US Surgical obtained a retroactive license from Choi, which subsequently led to the dismissal of the case against the company, as it was acknowledged by the district court and the Federal Circuit Court of Appeals. Certainly, the brief presentation of the case is much simpler than the actual judicial implications we nee to look into.The fact that Mr. Choi was added as a contributor to the invention, naming him co-inventor, with all the obligations and especially, the rights hereby deriving, is the key of the entire case. Judge Newman, during the Federal Circuit debate, pointed out in her final evaluation that “a joint inventor, even one who was a relatively minor contributor to the overall invention, could effectively prevent another joint inventor from enforcing the patent against an alleged infringer” .
This is exactly the case here, with the rights of Mr. Choi impacting on Ethicon’s decision to infringe against US Surgical. Nevertheless, as Judge Newman pointed out, there is a moral dilemma on why and whether to award the same rights on infringement to different individuals despite their actual contribution on the project (as it was the case here, Mr.
Choi had had a minor contribution on 2 of the claims. ). In 1984, an amendment to the United States Code §116 broadened inventorship, allowing it to include any person who made a contribution to at least one of the claims of a patent.
The rule prior to the 1984 amendment had been that “joint inventors shared an equal and undivided interest in their patent” , but also meant that they had to show inventorship on each of the claims of the respective patent, which proved a burden in the case of universities or corporations. The 1984 amendment certainly relaxed standards in terms of applying for a patent and inventorship, but it created additional problems (as is the case here) when referring to the interests that such a patent would bring.Because the amendment itself did not alter the property (hence, the rights scheme) that had been in use before 1984, one is supposed to believe that there was no intention to change that. Hence, we are brought by the 1984 amendment to the following situation: the property scheme remains intact, which means that all the inventors have an equal and undivided interest in their patent, while, at the same time, the inventor basis has greatly widened to include people who have worked on perhaps only one of the claims or who have had a minor participation on the project.This means that someone with a minor participation on the project would have the same rights as the team leader or one of the main researchers, for example. It is almost as if the amendment changed the head without thinking about the body.
Carlson points out two important questions that arise from this case . First of all, is it equitable to apply property rules applicable prior to the 1984 amendment and, second of all (strictly applied here), is it equitable, regarding the 1984 amendment, for one of the joint inventors to prevent action for one of the others?According to Judge Newman, the equity and property rights prior to 1984 were quite clear in stipulating that the joint inventor needed to have a clear contribution to the concept of the invention before being named on the patent. With the appearance of the 1984 amendment, there was no longer an idea of equal partnership in the conception of the project, as anybody with a contribution on the project, even minor, could be considered a joint inventor. Of course, this bring sin a question of equitability, but, even more so, it brings a question of functionality.Proving the contribution on a project, on the conception of a project, insisting on the important role that one has managed to play on developing an invention is something very subjective and, as all subjective issues are, very difficult to prove.
How do we show that X had the original idea from which everything started? His subsequent work on the invention may have been less important, but without the initial idea, the contribution of all other inventors would have been futile. Additionally, what if someone pitched in at a time when the project had been abandoned.Again, it is difficult to evaluate the importance of the contribution that one or the other has brought on the project. The 1984 amendment eased this in many ways, because a minor contribution is much easier to prove. Nevertheless, as Carlson points out, we are left to deal with the inequitable: why is the electrical technician sharing the right to infringe with the doctor who created the device? For Yoon, the 1984 Amendment was equivalent to sharing his work with someone whose role had been minor.
Turning to the second issue in debate, The US Code 252, referring to the effect of reissue, stipulated that “a reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold” .This practically means that all the co-owners are entitled to selling their rights to the party to third parties. However, oddly enough, the code does not permit each of the inventor to separately use his rights, notably the right of infringement, which was why Mr. Yoon could not sue US Surgical Corp without Mr. Choi’s consent. The owner must, in this case, be “joined voluntarily by all other owners of the patent” .The reasons that are generally given for this refer to (1) the “public interest in ensuring that each interested party to a patent infringement suit has an opportunity to protect his or her substantive rights”, (2) the “interest in protecting defendants from having to litigate multiple suits” and (3) the “public interest in protecting “the interest of a co-owner in being able to license to third parties under his or her patent without harassing suits by other co-owners” .Again, as we see from the explanations presented in the previous paragraph, the issue of equitability falls behind that of functionality and efficiency in legal procedures.
Going back to the Ethicon case, we need to draw some conclusions and make final evaluations on our findings. First of all, the US code now in use, as well as jurisprudence, encourages not necessarily the equitability of each judicial cause, but more the functionality and efficiency, the capacity of covering a sufficient proportion of cases to an equitable level.Second of all, the Ethicon vs. US Surgical falls into that particular category of cases that do not bring necessarily bring about an equitable conclusion.
In this case, a person spending time and resources on the development of a project finds himself having the same rights as a person who participated in only 2 of the claims and whose sole interest is in gaining a financial reward for claiming his rights on the project he was briefly involved in.Third of all, we are in a situation where the court gave a correct jurisprudential decision, without necessarily being a correctly realistic one. In order to match the two different levels we are operating on, the ethical/equitable one and the jurisprudential, concrete measures and advances need to be made in the legislation so as to cover such situations.