2012]
CONCEPTION AND MISCONCEPTION IN JOINT INVENTORSHIP
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the ability of PTO examiners to assess thoroughly the validity of the patent. As for the disincentive to invest in a patent of uncertain validity, Lichtman and Lemley observe that such uncertainty exists in any case and is only one (probably minor) factor affecting commercialization. 165 To the extent that the patent’s validity has been insufficiently verified by the PTO, strengthening the presumption of validity distorts patent markets arbitrarily. Regardless of whether this argument persuades, the justification for the strong presumption of validity fails utterly with respect to matters never considered by the PTO. The PTO relies heavily or entirely on the thoroughness, honesty, and candor of the patent applicant with regard to some patent matters. Even for those confident in the PTO’s expertise and rigor, a general presumption that the PTO does its job correctly does not justify a presumption of omniscience. Why should the mere submission of the patent application by self-interested applicants create a prima facie presumption of accuracy and truthfulness? 166 On this logic, parties have sometimes challenged the strong presumption of validity with respect to questions not examined by or raised before the PTO. In Eli Lilly & Co. v. Aradigm Corp., the plaintiff made the exceedingly narrow argument that a preponderance of evidence standard should be used “‘when there are two co-pending patent applications claiming the same subject matter’ in front of the [PTO], one of which issues as a patent allegedly omitting the inventor, and the other of which was filed by the allegedly omitted inventor.” 167 The plaintiff, in short, was not challenging the heightened burden of proof in general or even with respect to inventorship questions not considered by the PTO. Its argument was limited to the case in which an interference should have been declared but was not. The Federal Circuit rejected even that limited argument, pointing to the alleged coinventor’s “strong temptation” to misrepresent the extent of its involvement in the collaboration and the absence of any risk to its rights in its own patent application, which it could lose in an interference. 168
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Lichtman & Lemley, supra note 162, at 52-53. See Brown v. Edeler, 110 F.2d 858, 861 (C.C.P.A. 1940) (finding that a duly executed joint application is prima facie evidence of joint inventorship); Van Otteren v. Hafner, 278 F.2d 738, 741 (C.C.P.A. 1960) (finding that a duly executed joint application is prima facie evidence of joint inventorship). 167 Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1364 (Fed. Cir. 2004). 168 Id. at 1366-67. 166