Background
In January 1998District court
At the bench trial, the District Court concluded that Falana contributed to the conception of the claimed compositions –of-matter by developing a previously unknown method for their preparation and ordered the USPTO to correct the inventorship (the USPTO records as of 16 June 2016 are still not corrected at and the patent maintenance fee lapsed on December 14, 2012). The District Court also found the case to be exceptional under 35 U.S.C. § 285 on three grounds: 1) that defendants engaged in inequitable conduct, 2) that they took an untenable position in defending this case, and 3) that their continued defense of this case in the face of testimony that lacked credibility and veracity was frivolous and bordered on bad faith and awarded attorney fees to Falana.Appeal
Kent State and other Defendants appealed to the CAFC and the case was decided on January 23, 2012. The CAFC affirmed the decisions of the District Court on both inventorship and attorney fees. The Federal Circuit found that where the method of synthesizing the claimed compound requires more than the exercise of ordinary skill in the art, the discovery of that method is as much a contribution to the compound as the discovery of the compound itself. It established a binding precedent that the conception a synthetic method can make a person an inventor on a composition-of-matter claim, even if the person did not actually make the compound in question but only developed a method for making the compound, provided that the method was not publicly known previously.Significance
This case was decided after an earlier 2001's '' Chou v. University of Chicago'' and had similar circumstances and outcome, suggesting that university faculty and administration need to be better educated on the principles of Intellectual Property Law. It also established a currently binding precedent in regard to joint inventorship and attorney fee-shifting in the US Patent Law. According to Google Scholar, it has been cited in 35 legal decisions of the U.S. federal court system by June 20, 2016, and 59 times by August 09, 2020.Similar cases
* '' Peter v. NantKwest, Inc.'' (2019)References
External links
* * * {{Improve categories, date=June 2023 2012 in United States case law United States patent case law Kent State University