How would the Bass/Tuschl dispute be resolved under the AIA?

The new patent law, the AIA, has two sections which deal with resolution of patent rights through derivation proceedings. However, to get into the game, the challenger must have filed a patent application. Recall the dispute over the "Tuschl" patents.
University of Utah Professor Bass published an idea about RNA interference in an April 2000 review of Tuschl's published work and also described it at two conferences. Bass also discussed it with Tuschl at a conference dinner.


On the topic of co-inventorship/collaboration, from the Salt Lake City Tribune,
Much at stake in University of Utah's RNA interference lawsuit



Under patent law, those who collaborate on research that results in a technological breakthrough are supposed to share the patent and the financial rewards that flow from it.

The U.'s [University of Utah's] lawyers say Bass and Tuschl collaborated in that they were working toward the same end of characterizing the molecules that mediate RNA and often consulted one another at various meetings.

Defense lawyers ridiculed the U.'s case, saying its arguments are a "mockery" of the collaboration requirement, wrote attorney Thomas Maffei in a motion to dismiss the case.

"All scientists studying RNAi could be said to be working to this same end," he wrote. Nor should reading another scientist's published research count as collaboration.

Maffei continued: "If Utah's slippery standard for collaboration were the law, it would have a chilling effect on the free exchange of ideas among academic researchers at scientific meetings."





AND


It would mean that people would be afraid to have those dinner conversations. That would hurt science because they'd be afraid, if they shared their exciting insights and their lab [experiments], they'd lose all," Saris told Maffei's colleague, attorney David Grindler.

"[Bass] would have clammed right up because she would be afraid that if she shared what happened in her lab, that he could then use it to get the patent and she'd lose out completely."

Grindler replied that Bass would have a simple remedy: File a patent application.

"We wouldn't be here today, your Honor, if Dr. Bass had done what any other inventor does if they want a patent," said Grindler, a partner with the Los Angeles firm Irell & Manella.





Note previous post on IPBiz: University of Utah prevails at CAFC in a case of opposing state universities