Inventorship Standards for Biotechnology Inventions Under the U.S. and Japanese Patent Acts
IIC (International Review of Intellectual Property & Competition Law) (2021), DOI:10.1007/s40319-021-01064-8
Posted: 5 May 2021
Date Written: April 30, 2021
This article highlights differences between the United States and Japanese inventorship standards by comparing a U.S. Federal Circuit decision and a Tokyo District Court decision in which inventorship of the same invention was disputed. It further discusses how Japanese courts would, by applying Japanese inventorship standards, not find one of the U.S. researchers in this case to be inventor, despite the Court of Appeals for the Federal Circuit (CAFC) finding inventorship while applying the U.S. standard. It argues that the U.S. standard is overinclusive by including individuals for contributing to any part of the inventive process, but that the Japanese standard is too difficult to meet and may exclude inventors who made an important contribution. The overinclusive U.S. standard is influenced by the legacy of “first-to-invent”: a formality requirement that all individual inventors must contribute to every claim to file a single application and a substantive requirement that an inventor’s prior joint invention is the prior art against her later invention unless the same group of individual inventors made both inventions. The article concludes with a discussion of advantages and disadvantages of applying the U.S. and Japanese standards for determining inventorship of biotechnology inventions and proposes an inventorship standard harmonization through the leadership by World Intellectual Property Organization (WIPO).
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Keywords: Inventorship, Ownership, Biotechnology, U.S. Patent Act, Japanese Patent Act, First-to-Invent, First-to-File, Conception, Reduction to Practice
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