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For chemical compounds, the MPEP requires an inventor have a conception of the specific compounds being claimed. The present policy for inventorship, as laid out in the MPEP, explicitly clarifies that reduction to practice is not required for inventorship, nor is a person that suggests a result without means of accomplishing the result. patent application is if a person contributed to the conception of the subject matter of at least one claim. The ElephantĬurrently, the test for inventorship for a U.S. Accordingly, it appears a potential legal battle over inventorship would involve a combination of challenges to the contribution of various scientists as well as challenges to how an inventor is determined with existing inventorship rules, which reveals the elephant in the room. With the assumed lack of a “smoking gun” to prove the particular contributions of each scientist involved in the development of the claimed subject matter of the Moderna patent application, a court battle would likely involve diverse implementations of the existing inventorship rules. Yet, all we have, at least publicly, are assertions by both Moderna and NIH that they are both confident in their respective stance on different inventorship for the U.S.
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patent application, one would think that evidence would have likely already been presented, or at least alleged to exist. Indeed, if evidence existed that proved that only Moderna scientists created and developed the subject matter of each claim of the U.S. With collaboration admittedly occurring among multiple scientists from both Moderna and NIH, all for a common purpose of finding a stable and effective COVID-19 vaccine, it seems unlikely that inventive contribution can be clearly assigned to particular individuals involved in the process of developing the vaccine claimed in the filed patent application. Hence, inventorship for a patent can be different from authorship for article publication purposes in the event a contributor does not provide any subject matter of any claim of a patent application. A contributor to the content of a patent application is an inventor if the contribution is present in at least one claim.
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Patent and Trademark Office’s (USPTO’s) Manual for Patent Examining Procedure (MPEP).
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Code § 116 and applied in accordance with guidelines put forth in in the U.S. No Smoking GunĬurrent inventorship rules are codified in 35 U.S. patent application as co-inventors with the Moderna scientists. NIH has commented that it believes three scientists should be included in the U.S. Moderna has commented that, after an internal review, no NIH scientists designed the actual vaccine claimed in the U.S. patent application was filed by Moderna, with no NIH scientists listed as inventors. As a result of the collaboration, a vaccine labeled “mRNA-1273” was created and a U.S. Moderna and NIH collaborated on developing a functional vaccine for COVID-19, which is not in dispute. While a court may resolve the dispute over inventorship for the patent application, court review of current inventorship rules could be a slippery slope to chaos. Moderna and the National Institutes of Health (NIH) are poised for a legal battle over inventorship of a vaccine for COVID-19.
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“Court scrutiny to decide the inventorship of the Moderna patent application for the COVID-19 vaccine could reasonably result in changes to how an inventor is characterized based on current inventorship law.”