To Inventor Go The Spoils? That's Not Usually The Case

Monday, August 6, 2001
by Marc J. Lane

Reprint permission from the August 6, 2001 issue of Crain's Chicago Business.

When inventors assign their patent rights to their employers, they may also give up the legal right to claim credit for their inventions on any patent applications that might be filed with the U.S. Patent and Trademark office. And inventors whose accomplishments go unacknowledged may see their reputations suffer, their careers stall and their subsequent contributions to technological innovation stymied.

Consider the strange but revealing case of Chou vs. the University of Chicago.

Joany Chou was a graduate student, and later a research assistant, in molecular genetics and cell biology, at the U of C. She contends that her research there directly led to the development of an extraordinarily valuable herpes vaccine. And that Arch Development Corp., the wholly owned affiliate the university set up to license and commercially exploit its technology and intellectual property, was awarded patents on the vaccine after her professor filed patent applications, falsely claiming he was the vaccine's sole inventor.

Ms. Chou believes the university and the professor, one of the world's leading authorities on the herpes simplex virus and a longtime member of the prestigious National Academy of Sciences, usurped her patent rights and unlawfully deprived her of millions of dollars. So, she sued her professor, the university and Arch.

The U.S. District Court for the Northern District of Illinois ruled that she had no standing to sue and denied her a trial.

But Ms. Chou appealed her case. And the U.S. Court of Appeals has just decided that, even though everyone agrees she doesn't own the patents, she has the right to sue, after all.

The court relied on the university's policy that grants its inventor-employees a share of the royalties it derives from their inventions. Only because of that "concrete financial interest" in the patents can Ms. Chou now seek to set the record straight and prove her "inventorship." Otherwise, she might have had no remedy.

Courts are disinclined to tackle tough issues when easier-to-handle legal principles can do the job just as well. And that's what happened here.

But, along the way, the Appellate Court took special notice of Ms. Chou's plea that a
reputational interest alone should have been enough to entitle her to a trial. In fact, the court conceded that inventing something important is a mark of success, and merely being identified as its inventor may be all it takes to ensure one's professional success.

The court understands the economic reality: Recognition as an inventor can enhance one's reputation, along with one's value in the marketplace. Recognition can also fan the flames of
entrepreneurship and ignite the inventor's passion to create.

The 18th-century French guarantee of "moral rights" protects the personal and reputational value of a work to its creator. In 1990, Congress codified the ancient principle by passing the Visual Artists Rights Act.

The law, which protects only certain visual artists, grants them the moral right of "attribution" — to claim authorship of a work, whether or not an artist owns it. Our research scientists and other inventors surely deserve the same legal protection.


Marc J. Lane ( is a Chicago lawyer and financial planner and an adjunct professor of law at Northwestern University School of Law. His recently published book is Advising Entrepreneurs: Dynamic Strategies for Financial Growth (John Wiley & Sons, Inc.).


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Copyright © 2001 by Crain Communications Inc.

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