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

ByKristin Casler

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Updated onOctober 14, 2017

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

inline imageIt 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.

inline imageIn 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.

inline image“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.

inline imageBoth 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.

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

About the author

Kristin Casler

Kristin Casler

Kristin Casler is a seasoned legal writer and journalist with an extensive background in litigation news coverage. For 17 years, she served as the editor for LexisNexis Mealey’s litigation news monitor, a role that positioned her at the forefront of reporting on pivotal legal developments. Her expertise includes covering cases related to the Supreme Court's expert admissibility ruling in Daubert v. Merrell Dow Pharmaceuticals Inc., a critical area in both civil and criminal litigation concerning the challenges of 'junk science' testimony.

Kristin's work primarily involves reporting on a diverse range of legal subjects, with particular emphasis on cases in asbestos litigation, insurance, personal injury, antitrust, mortgage lending, and testimony issues in conviction cases. Her contributions as a journalist have been instrumental in providing in-depth, informed analysis on the evolving landscape of these complex legal areas. Her ability to dissect and communicate intricate legal proceedings and rulings makes her a valuable resource in the legal journalism field.

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