Co-inventorship to a patent had not been proved

In Insights

7 November, 2018

On 10 October 2018 the Eastern High Court in Denmark gave judgement in a case between Coloplast and Hollister, regarding claimed co-inventor ship in a patent application.

In the case Coloplast claimed to be mentioned as co-inventor on and co-owner of a patent application filed by Hollister. The reason Coloplast claimed to be co-inventor was that Hollister – according to Coloplast – had used laboratory test results which Coloplast had disclosed in another patent opposition case between the same parties. Coloplast claimed that this knowledge was used in part of the patent claim, which concerned activation of catheters by wet installation.

Coloplast basically argued that changes which Hollister made to patent claim 1 after the disclosure of the Coloplasts test results in the opposition case, were made solely due to the disclosure of these Coloplast test results. On this background Coloplast claimed to be co-inventor.

The High Court gave judgement in favor of Hollister and stated among other things that, that Coloplast had not claimed that activation of catheters by wet installation was an invention and further that: “Coloplast has not stated how Coloplast more definite considers that it has contributed to Hollister obtaining a patent as described in claim 1 of the revised patent claim of 1 December 2011, including activation by wet installation. It has not been stated that Coloplast and Hollister have had a cooperation that has led to the invention described or that Coloplast through such a cooperation has achieved co-ownership in parts of the invention such as claimed”.

In other words – and probably not very surprising; if you claim co-inventorship to parts of an invention in a patent application, the part you claim co-inventorship for needs to be an invention. The decision also highlights that you should be careful regarding the knowledge you share – all though shared for a totally different another purpose, you should consider if the knowledge can be used by your competitor elsewhere.

It is unclear why the court has put so much emphasis on the cooperation – or rather the lack thereof – and uses this as part of the justification for not rewarding Coloplast rights of co-inventorship, as it is hard to see that cooperation necessarily should be a prerequisites for co-inventorship.

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