Patent Expert Witness Advises on Graduate Student’s Claim that She was Omitted from Patent Inventorship

A patent expert witness advises on a case involving cancer drug patents in Nebraska. One patent contains compound claims, the other contains method-of-treatment claims. Two cancer research doctors are named as inventors. Defendant was a doctoral candidate whose research advisors were the patent inventors. The university where the research was conducted assigned all intellectual property (IP) rights to the doctors, who then agreed to enter into an exclusive worldwide license regarding the inventions with defendant drug company. The agreement invested the company with exclusive rights to prosecute, maintain and enforce the patents.

Defendant contends she contributed in a significant, material and inventive way to the patents but that she was improperly omitted as a named inventor. The company disputes that the graduate student was an inventor and seeks declaratory judgment that the two doctors were properly named on the patents and that the defendant should not be added as an additional inventor. Defendant counterclaimed against the plaintiff company.

Question(s) For Expert Witness

1. What is the process for checking the status of pending patent applications?

2. Should the defendant have known the details of the patent before it was approved?

Expert Witness Response

It is my understanding that defendant told one of the inventors that she thought she should be included as an inventor on the pending drug patent. The inventor declined, and the defendant disagreed. After reporting her concerns to the university, she decided to obtain counsel.

In my opinion, any competent patent attorney at the time would have been able to obtain the publicly available prosecution history for the application that would issue as the patent. The USPTO website maintains a “Patent Application Information Retrieval” (PAIR) system. The system displays information regarding patent application status once the patent application has been published. There is both a public and private side to PAIR. “Public PAIR,” which is accessible by anyone with internet access, displays issued or published application status. To access public PAIR, you need only have a patent, application, or publication number that you wish to search. If a person did not have the patent, application, or publication number, he or she could search the USPTO's searching databases to locate the patent or published patent application number. Then a public PAIR search could be performed.

“Private PAIR” is the system developed to provide secure access for customers who want to view current patent application status electronically via the Internet. To access private PAIR, you must be a registered patent attorney/agent, an independent inventor, or a person granted limited recognition, have a customer number, and have a digital PKI certificate to secure the transmission of the application. The USPTO private PAIR provides real-time status information for all action taken by the USPTO for a given application. Because private PAIR allows the customer to have access to USPTO's internal database, the customer can view the information as soon as it is posted.

Both Public PAIR and Private PAIR were in operation in October of 2008. A patent attorney or patent agent at that time could have easily and quickly accessed the prosecution history of the application that would issue in real time. He or she would have seen every action requested and taken.

The expert is a patent attorney and former biology and microbiology research scientist.