Friday, March 29, 2013

A journal editor acting badly, and the need to file patent applications before journal submissions

The basics of the dispute in
Rubin v. General Hospital Corporation :

The dispute arose from the
allegedly improper communication to the named MGH
inventors, Dr. James F. Gusella and Dr. Susan A.
Slaugenhaupt, of a manuscript or the abstract thereof of a
scientific article that Drs. Rubin and Anderson had submitted
to the American Journal of Human Genetics for
. The complaint states that the named inventors
used this still confidential scientific information to
complete the inventions described and claimed in the
MGH patents
. The district court granted summary
judgment that remedy under §256 is not available, reasoning
that these separate teams of scientists did not
have a collaborative relationship and therefore could not
be joint or substitute inventors of the MGH patents.1 The
district court previously dismissed the count under §102(f)
as “duplicative” of the §256 counts.

Of the subject matter:

Drs. Rubin and Anderson at the Department of Biological
Sciences of Fordham University, and Drs.
Slaugenhaupt and Gusella at the Massachusetts General
Hospital, had been conducting research to determine the
genetic mutations that cause the inherited disease Familial
Dysautonomia (FD), also known as Riley-Day Syndrome.
Drs. Rubin and Anderson identified the two genetic
mutations causative of FD, called the “major” and “minor”
mutations. The record states that on December 20, 2000
they submitted the manuscript of an article entitled
“Familial Dysautonomia Is Caused By Mutations of the
IKAP Gene” to the Editor of the American Journal of
Human Genetics. The article identified the operative
mutations and their location in the region of the IKAP
gene encoding a protein called IkB kinase complexassociated
protein. Dr. Rubin wrote to Dr. Stephen
Warren, the Editor of the Journal, and identified four
scientists whom the authors believed to be qualified to
peer-review the article; the scientists were at Cornell
University, the University of California, Baylor University,
and Sloan Kettering Institute. Dr. Rubin asked that
Dr. Gusella and his colleagues at MGH not receive the
article for peer-review because they were working competitively
on the same problem.

On January 6, 2001, Drs. Gusella and Slaugenhaupt
filed Provisional Patent Application No. 60/260,080 describing
these FD mutations and claiming their diagnostic
use. On January 17, 2001, Drs. Rubin and Anderson
(with a third inventor) filed Provisional Patent Application
No. 60/262,284 describing these FD mutations and
claiming their diagnostic use. The patents in suit issued
to Drs. Gusella and Slaugenhaupt, assigned to MGH: U.S.
Patent No. 7,388,093 entitled “Gene For Identifying
Individuals with Familial Dysautonomia” issued June 17,
2008; and divisional Patent No. 7,407,756 entitled “Methods
for Detecting Mutations Associated With Familial
Dysautonomia,” issued August 5, 2008. The record states
that Drs. Rubin and Anderson declined to take the steps
to initiate an interference in the Patent and Trademark
Office, although the patent examiner so suggested.

Rubin and Anderson, whose information was sent by the journal editor
to Gusella and Slaugenhaupt (who filed the first patent application),

We conclude that the district court correctly ruled
that the independent relationship between these teams of
scientists, and the nature of this communication of information,
do not support joint invention in accordance with
§116, or warrant change or substitution of inventorship
under §256. Although §256 is a general remedial statute,
the district court correctly held that the record does not
support “correcting” the named inventorship of the MGH

The case would have to be decided by an interference


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