Watermark - Conor Medsystems v University of British Columbia (FFC)
Lachlan Wilson of Watermark reports on the Full Court decision on Conor Medsystems, Inc v The University of British
Columbia regarding entitlement:
- “The patents in question had been granted jointly to Angiotech Pharmaceuticals, Inc. and the University of British Columbia (UBC) who each claimed entitlement through assignment from their employee inventors. The preliminary question to be answered was whether the patents in question were liable to be revoked for lack of entitlement pursuant to s138(3)(a) of the Patents Act 1990, if the assumed facts could be established by evidence.
The assumed facts were that the UBC inventors had made contributions that were not encompassed by the claims as ultimately granted.” - “In the UBC case the contributions of the UBC employees were not ultimately claimed. A detailed analysis of their contributions would be required to decide whether they may have had a positive material effect on the invention sufficient to be named as inventors. Alternatively, the collaboration between the parties may have been sufficient for UBC to be entitled to grant of the patent even in the absence of their being named as inventors.”
- “It becomes apparent that it is critical to review and document all inventorship and ownership claims prior to filing a patent claim. This identification of inventors must also be continually reviewed during prosecution of the patent family. If subject matter is deleted, any relevant changes to inventorship should also be made.”