In Falana v. Kent State University, the key issue before the US Court of Appeals for the Federal Circuit was whether a putative inventor who envisioned a novel chemical compound's structure and contributed to the method of making that compound is a joint inventor of a claim covering that compound.

This litigation concerns the inventorship of U.S. Patent No. 6,830,789 (the '789 Patent). Kent Displays, Inc. (KDI) was established as a spin-off technology company from Kent State University. In 1997, KDI began a research program to develop chemical compounds that can be used in displays for electronic devices.

The litigation arose when Dr. Olusegun Falana, while working for KDI, developed a protocol for making a novel class of chemical compounds and synthesized a compound within this class. After Dr. Falana left KDI, other KDI employees synthesized another compound within the class of compounds that Dr. Falana identified.

In June 2000, KDI and Kent State filed a provisional application that led to the '789 Patent, which identified the protocol that Dr. Falana developed as the protocol used to synthesize the claimed compounds. However, Dr. Falana was not listed as an inventor.

Dr. Falana sued to correct the inventorship of the '789 Patent under 35 U.S.C. Section 256. After a bench trial, the U.S. District Court for the Northern District of Ohio ordered the USPTO to issue a certificate of correction adding Dr. Falana as a named inventor on the '789 Patent.

In its decision on appeal, the Federal Circuit affirmed the district court’s decision that Dr. Falana was a joint inventor of the '789 Patent. The court ruled that a putative inventor who envisions the structure of a novel class of chemical compounds and contributes to the method of making that class contributes to the conception of that class.

In some circumstances, the contribution to the method of making a novel genus of claimed compounds is irrelevant to the question of inventorship, for instance, where the method of making a compound requires nothing more than the use of ordinary skill in the art. However, if the method requires more than the exercise of ordinary skill, the method's discovery is as much a contribution to the compound as the discovery of the compound itself. However, once the method of making the novel genus of compounds becomes public knowledge, it becomes part of the knowledge that makes up ordinary skill in the art.

In this case, the Federal Circuit upheld the district court's finding that Dr. Falana is entitled to joint inventor status because:

To ensure the correct inventive entity is identified on a patent claiming a class of chemical compounds, the patent owner should consider whether those involved in research leading to a new class of chemical compounds may be entitled to inventorship status, especially those who contribute to the method of making the new class of compounds and make a chemical compound within the claimed class.