Inventorship Standards for Biotechnology Inventions Under the US and Japanese Patent Acts

This article highlights differences between the United States and Japanese inventorship standards by comparing a U.S. Federal Circuit decision and a Tokyo District Court decision in which inventorship of the same invention was disputed. It further discusses how Japanese courts, by applying Japanese inventorship standards, would not find one of the U.S. researchers in this case to be inventors, despite the Court of Appeals for the Federal Circuit (CAFC) finding inventorship while applying the U.S. standard. It argues that the U.S. standard is over-inclusive by including individuals who did not contribute to any part of the inventive process, but that the Japanese standard is too difficult to meet and may exclude inventors who made an important contribution. The over-inclusive U.S. standard is influenced by the legacy of "first-to-invent": a formality requirement that all individual inventors must contribute to every claim to file a single application and a substantive requirement that an inventor's prior joint invention is the prior art against her later invention unless the same group of individual inventors made both inventions. The article concludes with a discussion of the advantages and disadvantages of applying the U.S. and Japanese standards for determining inventorship of biotechnology inventions and proposes a harmonization of inventorship standards through the leadership of the World Intellectual Property Organization.