Interference No. 104,522 Paper`108
Nichols v. Tabakoff Page 59
method of making these compounds or assert that Tabakoff was a joint inventor of the
synthesis method used by Nichols. Tabakoff simply acknowledged that Nichols made a
number of compounds following its request, a fact not in dispute.
Third, patent rights might be assigned for any number of reasons, including as
payment for services rendered. Tabakofrs suggestion to assign patent rights appears
linked to a consideration of the "amount of fiscal resources, time, and effort" being
expended would not be inconsistent such a reason. Such ownership rights have no
bearing on the question of inventorship. Moreover, Tabakoff's proposal to include
Nichols as a collaborator in a Phase 11, SBIR application, which "application can include
the testing of compounds you have synthesized ... [thereby providing monies] to
establish the basic screening of the available compounds and for future synthesized
compounds" (Ex 2002, 114-5), it not inconsistent with compensating Nichols for its past
and future services rendered. Finally, reference to a "Phase 11" application implies the
prior existence of a Phase I application.
Therefore, the letter of February 14, 1996 is not inconsistent with a good faith
disagreement over joint inventorship of Tabakoffs claimed compounds.
ii. the February 28, 1996 letter (Ex 2003)
106. In the letter dated February 28, 1996, Dr. Tabakoff asked Dr. Yielding whether
he thought that the compounds he and Dr. Yielding had been discussing might be
covered under three recent, relatively broad-based patents enclosed with the letter (but
not made of record). Dr. Tabakoff wanted Dr. Yielding's "critical assessment since the
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