Thursday, September 01, 2016

CRISPR patent confusion over lawyer representation

Kerry Grens has a post on "the other patent dispute" in CRISPR. Within the post is the text:

Normally, if an inventor believed he or she was left off a patent, he or she could raise the issue in the patent office or federal court and appeal to have it added, explained Dan Burk of the University of California, Irvine, School of Law. Yet, for reasons that are unclear, the university didn’t go this route. “It’s hard to tell what [Rockefeller] wanted to accomplish,” said Burk.

If the patent application move by Rockefeller isn’t unusual enough, there’s this: the Broad alleges that the university filed the application without ever telling the institute.

In a letter sent to the USPTO in August 2014, Ellen Law, a lawyer representing the Broad, wrote that the institute had nothing to do with Rockefeller’s application. “The present application was NOT FILED WITH ANY NOTICE to Feng Zhang, the Broad or MIT prior to its filing,” she wrote (emphasis Law’s), adding that the Broad’s position maintained that Marraffini was not an inventor of the described technology.

The Broad team first learned of Rockefeller’s competing application when a patent examiner contacted a Broad lawyer regarding an unrelated matter. Law pointed out in the letter that Zhang, the Broad, and MIT did not agree to Rockefeller’s attorneys representing them in filing the application, and “IF THEY TOOK ON ANY REPRESENTATION OF THE BROAD, MIT AND FENG ZHANG SUCH WOULD BE A VIOLATION OF THE USPTO’S RULES OF PRACTICE,” she wrote.

Burk agreed with Noonan, saying he has never seen a situation like this. Patent applicants are supposed to sign declarations stating that an attorney is representing them when filing paperwork with the patent office. “Everybody knows that,” he said. “So it’s very strange to file something with somebody’s name on it when you don’t have their permission to represent them.”

posted at the Scientist,

The bolded sentence of the Grens article, as written, is inaccurate. There can be pro se patent applicants.
refer to 37 CFR 1.32 which provides a power of attorney may be held by "One or more joint inventors." See generally MPEP 402.

Of the inventorship issue, see 35 USC 116, which states as to inventors:


(a) Joint inventions. When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.

(b) Omitted inventor. If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.

(c) Correction of errors in application. Whenever through error a person is named in an application for patent as the inventor, or through error an inventor is not named in an application, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

As to the "required oath," 37 CFR 1.63 states in part

Inventor's oath or declaration.

(a) The inventor, or each individual who is a joint inventor of a claimed invention, in an application for patent must execute an oath or declaration directed to the application, except as provided for in § 1.64. An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or declaration believes the named inventor or joint inventor to be the original inventor or an original joint inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
(4) State that the application was made or was authorized to be made by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application data sheet in accordance with § 1.76, the oath or declaration must also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail, and residence, if an inventor lives at a location which is different from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an application unless that person has reviewed and understands the contents of the application, including the claims, and is aware of the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56. There is no minimum age for a person to be qualified to execute an oath or declaration, but the person must be competent to execute, i.e., understand, the document that the person is executing.

If the application in question is a continuing application, 37 CFR 1.63 further states:

(d)(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64.

Ownership in patents with joint inventors parallels joint tenancy. Each joint inventor owns a right to all claims, even to claims to which a particular joint inventor did NOT contribute (Recall the Lucent/Fraunhofer matter). An issue in the present dispute might be whether one joint inventor can name patent counsel for prosecution of the application without informing the other joint inventors.

**As to some historical disputes, recall the matter of Paul Chu and the 1-2-3 superconductors:

Although Cox was retained by UH [Houston], Chu executed a Declaration and Power of Attorney authorizing Cox to represent him during the prosecution of the patents-in-suit. In approximately 1990, the University of Alabama initiated an interference proceeding on behalf of Chu's former student, Wu, ("Wu Interference") to contest priority of invention and inventorship of the patents-in-suit. In essence, Wu and one of his graduate students claimed that they had first independently discovered the 123 Y-B-C-O superconductor.


In January of 2006, nearly twenty years after the filing of the first patent application, Hor and Meng approached UH officials to inquire about inventorship of the patents-in-suit. Meng allegedly came to Hor's office with a heavy conscience, disclosing to Hor that she had lied about the conception of the Yttrium substitution during the Wu Interference. During that meeting, Meng claims that Hor asked her, "[D]o you know we are also inventors (sic)?" (Meng 2006 Aff. at 5.) Meng allegedly responded, "I think we should but I do not know, I never asked." (Id.) Hor supposedly suggested that they find out. (Id.)

[from 765 F. Supp. 2d 903 ]

In passing, The Scientist has a different post, by Catherine Coombes, entitled -- Opinion: How to Avoid Legal Problems in Collaborative Research --



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