Ono Pharmaceutical Co., Ltd., et al. v. Dana-Farber Cancer Institute, Inc.

Section 116 of title 35 provides that “when an invention is made by two or more persons jointly, they shall apply for a patent jointly.” A person who claims to have been improperly omitted from the list of inventors on a patent may bring a cause of action for correction of inventorship under 35 U.S.C. § 256. The Federal Circuit has held that “to be a joint inventor, an individual must make a contribution to the conception of the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). In this case, in conflict with this Court’s guidance and the Fourth Circuit, the Federal Circuit adopted a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are not probative of whether those alleged contributions were significant to conception. App. 13a. The question presented is: Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception. (i)