This is a guest post from Theresa Stadheim of Schwegman Lundberg & Woessner
In Chandler Dawson v. Chandler Dawson and Lyle Bowman, Appeal Nos. 2012-1214,-1215,-1216, -1217 (Fed. Cir. March 25, 2013) (a copy can be found at the end of this post), the Federal Circuit affirmed a Board of Patent Appeals and Interferences (BPAI) interference decision that Chandler Dawson was not the sole inventor of the inventions covered by U.S. Patent No. 6,239,113 (“the ‘113 patent”) and U.S. patent No. 6,569,443 (“the ‘443 patent”).
Chandler Dawson was an employee of UCSF in the summer of 1997 when he gave a presentation to the World Health Organization (WHO) about topical use of an antibiotic for treating eye infections. During the presentation and during subsequent presentations and discussions about the antibiotic, Dawson stated that he was having trouble formulating a delivery mechanism for the eye drug. After a delivery mechanism was created, without the assistance of Dawson, Dawson and another party, Dr. Lyle Bowman, filed patent applications assigned to InSite that later issued as the ‘113 patent and the ‘443 patent. UCSF then filed a patent application, essentially copying the ‘113 and ‘443 patent specification and claims and naming Dawson as the sole inventor, to provoke an interference proceeding. The issue in the interference proceedings came down to a determination of who conceived of the inventions, and when they conceived of the inventions.