Interference No. 104,522 Paper108
Nichols v. Tabakoff Page 57
declare[d] that all statements made herein of my own knowledge are true
and that all statements made on information and belief are believed to be
true; and further that these statements were made with knowledge that all
statements made with the knowledge that willful false statements and the
like so made are punishable by fine or imprisonment, or both, under 18
U.S.C. 1001 and that such willful false statements may jeopardize the
validity of the application or any patent issued thereon." [Rule 63
Declaration submitted with Paper 1 in application 09/171,697.]
b. Tabakoff did not move to correct inventorship
Second, Tabakoff has not filed a motion to correct inventorship of its application
under 37 CFR § 1.634ý
C. Tabakoff does not acknowledge Nichols as joint
inventor in the letters proffered by Nicholls (Exs 2002
2007)
Third, as discussed in more detail below, the series of letters proffered by
Nichols (Exs 2002-2007) show that Tabakoff acknowledged Nichols' labor in
synthesizing compounds and suggested that Nichols might have ownership rights in
future patents. Ownership is separate from inventorship. Moreover, rather than
acknowledging or suggesting that Tabakoff believed Nichols to be joint inventors of its
claimed compounds, several of these proffered letters (Exs 2004-2007) are quite to the
contrary.
L the February 14, 1996 letter (Ex 2002)
104. A letter dated February 14, 1996 from Dr. Tabakoff to Dr. Yielding acknowledged
that members of Dr. Yielding's laboratory synthesized twelve compounds as a result of
early communications involving Dr. Snell [Tabakoffl (Ex 2002, % 1). Dr. Tabakoff
suggested that Lohocla Research Corporation [Tabakoff's assignee] and Dr. Yielding
1. come to a formal agreement on further research and pharmaceutical development of
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