Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 56
not provide a basis for inequitable conduct or give rise to a duty to raise an inventorship
issue with the examiner, especially since Tabakoff does not claim Nichols' synthesis
scheme. Finally, Tabakoff maintains that Nichols has failed to prove the requisite clear
and convincing evidence of intent to deceive. [Paper 46, pp. 11-15.]
D. Analysis
"Inventorship" arises from conception, not development or reduction to practice,
and is a question of who actually invented the claimed subject matter. Each inventor
must contribute to the conception of the claimed subject matter, although each inventor
need not make the same type or amount of contribution. It is undisputed that Nichols
made 4-urea derivatives of kynurenic acid at the request of Tabakoff, i.e., that there
was some type of collaborative relationship between Nichols and Tabakoff. However,
collaboration l2er se does not itself produce joint invention any more than does the
technical exchange of data pe se (or else NIH, Mr. Ezell, Dr. Seifert, etc., would also
necessarily be co-inventors). Nichols fails to show that it "significantly" contributed to
the invention of Tabakoff claims 11-15, 18 and 19 by a preponderance of the evidence
as discussed in § IV. above.
1 . the evidence does not show that Tabalkoff believed Nichols to
be joint inventors of the compounds of Tabakoff claims 11 -15,
18 and 19
a. the Rule 63 declaration in Tabalkoff '697 does not
include Nichols
First, the Rule 63 declaration submitted in Tabakoff'697 only names Boris
Tabakoff, Lawrence Snell and Paula L. Hoffman as inventors. Tabakoff, Snell and
Hoffman each
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