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N.Y.U. JOURNAL OF INTELL. PROP. & ENT. LAW
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powerful disincentive to collaborate in applied research, because, except in the rare situation that the research is certain to result in the successful development of a valuable invention in short order, a researcher’s contribution could be wasted if the researcher needs to leave the collaboration before a patentable result is produced. Many such reasons would be beyond the control of the collaborator, such as illness, financial distress during extended research, termination of employment with an employer sponsoring the research, and so forth. The PLAA establishes beyond peradventure that Beta is as much an inventor as his collaborators. Similarly, the PLAA suggests that in assessing inventorship in scenario {1b} above, if Ron rather than Ilsa discovered the utility of Ilsa’s compound, Ron would be a coinventor. Before the PLAA, courts could deny the importance of Ron’s inventive contribution. For example, in Eli Lilly & Co. v. Premo Pharmaceutical Laboratories, Inc., two scientists had synthesized a compound (cephalexin) in “the hope that the resulting compound would be [an] effective oral antibiotic” for certain biochemical reasons.107 A third scientist tested the compound and found that it was indeed an effective oral antibiotic for entirely different biochemical reasons than the first two scientists had guessed. The patent on the compound, however, listed only the first two scientists as inventors. When an accused infringer challenged the validity of the patent for nonjoinder, the Third Circuit held that the third scientist’s discovery of the invention’s “nonobvious trait” did not qualify him as a joint inventor of the compound. In attempting to justify this result, the court wrote: it is without question that the named inventors, Drs. Morin and Jackson, were the only persons who performed the synthesis that created the patented product. In the words of § 116, cephalexin was ‘made by’ the two named inventors, not by the biochemist who first noted that the organic chemists’ predictions had been realized.108 After the PLAA, this result even less plausible than before. A compound whose utility or nonobvious traits are unknown has not yet been “conceived” as an invention under the patent law.109 A collaborator who makes a significant, original contribution to conception, such as by discovering utility or the nonobvious trait, is
107
Eli Lilly & Co. v. Premo Pharma. Labs., Inc., 630 F.2d 120, 135 (3d Cir. 1980). Id. 109 See supra text accompanying note 46. 108