Federal Circuit restates requirements to be considered an inventor of a patentJanuary 20, 2006

In Stern v. Trustees of Columbia University, the Federal Circuit reaffirmed the legal requirements to be considered an inventor of a patent. The patent at issue involved a method of treating glaucoma by use of prostaglandins. Lazlo Bito, a faculty member at Columbia, is the named inventor of the patent. Stern was a medical student who completed an ophthalmology research elective with Bito while in medical school at Columbia.Increased pressure inside the eye (intraocular pressure, or IOP) is a significant risk factor for glaucoma development. Bito had previously published research papers regarding the use of prostaglandins to reduce IOP in various animals, including rabbits and owl monkeys, and concluded that rhesus monkeys would be a good choice for further research. Stern conducted experiments using prostaglandins on rhesus monkeys and cats, and found evidence that a single topical application reduced IOP in these animals; the experiments did not prove that tachyphylaxis (the reduction in effectiveness of the same treatment over time) would not occur with prostaglandin use. After Stern left Columbia, Bito performed experiments on rhesus monkeys regarding the effect of repeated prostaglandin application of IOP. The claims of the patent involve a method of treating glaucoma by periodic topical application of eicosanoids, a category of compounds which include prostaglandins. Stern asserted that his earlier experiments showed that he should be included as an inventor of the patent.The Federal Circuit disagreed. First, the court noted that in order to be considered an inventor of a patent, a person must contribute to ‘conception,’ which is ‘the formulation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention.’ While a person must only contribute to the conception of one of a patent’s claims to be considered an inventor of that patent, evidence of inventorship must have corroboration. Applying these criteria to the facts, the court found that Stern played no part in the conception of the invention. He neither discovered that prostaglandins reduce IOP nor conceived of the idea to use prostaglandins as a glaucoma treatment. Further, Stern’s unwitnessed laboratory notebooks, had they been available, are insufficient to corroborate Stern’s claim. As a result, the court affirmed the lower court’s decision that Stern was not an inventor of the patent.This case demonstrates that it is often essential to not only keep records of research activity that could later result in a patentable invention, but also that the records of such activity should be corroborated at the time they are made, such as by having a third party sign laboratory notebooks as a witness. Without such evidence, it is often difficult to prove not only inventorship (as demonstrated by this case), but also the date of invention, which can be necessary to prove priority when two parties file for a patent on the same or very similar inventions.For the complete decision, log on to http://fedcir.gov/opinions/05-1291.pdf