In Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., No. 19-2050 (Fed. Cir. July 14, 2020), the Federal Circuit affirmed a district court judgment ordering two scientists, Dr. Gordon Freeman and Dr. Clive Wood, to be added as co-inventors on Ono Pharmaceutical's patents claiming the use of antibodies to target a specific receptor (PD-1) or its ligand (PD-L1) to treat cancer.

The Federal Circuit held that Drs. Freeman and Wood's work contributed to the conception of the patented inventions in this particular case.  Specifically, Drs. Freeman and Wood collaborated with Inventor Dr. Tasuku Honjo, the Nobel Prize winner for his discovery of PD-1, and provided what the Court found to be “significant building blocks” for the particular inventions, including their discoveries of PD-L1, the PD-1/PD-L1 interaction being inhibitory, and PD-L1 expression in human tumors.

The Federal Circuit rejected Ono's arguments challenging the extensiveness of Drs. Freeman and Wood's contributions to conception.  The Federal Circuit viewed that none of the proffered bases in this particular case—Drs. Freeman and Wood's absence from certain experiments leading to conception, no previous in vivo work by them, the novelty and nonobviousness of the claimed inventions over a patent application reflecting Drs. Freeman and Wood's contribution, and publication of their work a few weeks prior to conception of the total invention—necessarily negated the alleged inventors' overall contributions to conception of the invention throughout their collaborations with Dr. Honjo.

Originally published by Finnegan, July 2020

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