A patent's inventors are presumed to own the patent. Thus, significant business decisions are often predicated on the understanding that a patent's inventors are correctly named. These decisions can run the gamut from licensing or purchasing patent rights and investing in product development to planning strategies in patent infringement litigation.

If a patent's inventorship is later corrected, the consequences can be significant. For example, one potential defense to a claim of infringement is to obtain a license from a putative inventor and seek correction of inventorship under Title 35 of the U.S. Code, Section 256.

The Dana-Farber inventorship litigation, Dana-Farber Cancer Institution Inc. v. Ono Pharmaceutical Co., is a recent successful example of this strategy. Dana-Farber shows how inventorship issues can play out over the course of initial discovery, subsequent research and development and commercialization, and litigation, and its cautionary tale serves as a useful source of practical and strategic pointers to patentees, investors and challengers alike. Four key takeaways are discussed below.

Originally published September 14, 2020, “4 Inventorship Lessons From Fed. Circ.'s Dana-Farber Ruling,” Law360.