Inventorship Dispute
Inventorship was an issue at trial. The State falsely told the Jury that Petr had no ownership rights in any invention, saying that Petr did not invent anything, which has been determined to the contrary. Petr's patent No. 5082813, the Carnahan & Knotts patent application and related documents becamed available only long after Petr's trial, so the jury never had this information.
Ultimately Petr was determined to be the sole inventor of his invention, following an inventorship dispute at the United States Patent Office. In fact, accoridng Florida law (Fla. Stat. Sec. 240.229), it was USF's responsibility to protect Petr's rights to any invention that he made while he was a student-employee at USF.
Dr. Carnahan(USF) and Mr. Knotts(Florida Progress) initiated the inventorship dispute, by filing a competing patent application, and by asking the Patent Office to initiate interference proceedings against Petr. The Patent Office found no interference, and determined that Petr was the sole inventor of the invention. The events occurred as follows:
January 6, 1989 Petr filed a patent application with the UNITED STATES DEPARTMENT OF COMMERCE, Patent and Trademark Office. Petr's application, Aluminosilicates with Modified Cation Affinity, was directed to Art Unit 116 and examined by Carl F. Dees, a primary examiner.
September 27, 1989 Carnahan(USF) & Knotts(Florida Progress) filed a patent application with the UNITED STATES DEPARTMENT OF COMMERCE, Patent and Trademark Office. Dr. Carnahan's application, Highly Selective Zeolites for Removal of Ammonium from a Wastewater, was directed to Art Unit 136 and received by Ivars C. Cintins, a primary examiner.
Petr's application and the Carnahan(USF) & Knotts(Florida Progress) application contain different information. Each application was sent to a different Art Unit. Normally, both applications would have remained in separate Art Units with the respective examiners. However, on December 8, 1989, Brian Burgess, USF General Counsel, sent correspondence to Petr's patent counsel(Charles A. McClure), to the Commissioner of Patents, and to the Patent Office Director of Group 130. According to this correspondence, "because of the potential competing inventorship claims, the existence of these two patent applications should be brought to the attention of the Patent Office." And then, the correspondence says "that there is an inventorship dispute", and advises that "it is appropriate that an interference be set up between these two applications."
USF told the Patent Office (i) that Petr was a laboratory assistant, responsible for assisting Dr. Carnahan with respect to the Florida Progress project; and, (ii) that there are two actions presently pending in the Florida Courts against Petr - a criminal action charging misappropriation of trade secrets and a civil action seeking the lab notebooks, an injunction against disclosure of confidential information, specific performance of a confidentiality agreement, damages for breach of fiduciary duty, and civil remedies under the Florida Criminal Practices Act.
In response, The Patent Office transferred the Carnahan(USF) & Knotts (Florida Progress) application to Art Unit 116 and assigned it to Carl F. Dees. Carl F. Dees examined both applications concurrently for over one year. The Patent Office determined there was no interference and the patent was awarded to Petr.
Dr. Carnahan(USF) and Mr. Knotts(Florida Progress) did not know what Petr's invention was. Carnahan(USF) & Knotts(Florida Progress)'s very own patent application proves they did not know what the invention was, and clearly places them outside the scope of the invention. The Carnahan(USF) & Knotts(Florida Progress) patent application claims that, with respect to petr's invention, "improvement is greatest at temperatures between 675 C° and 775 C°...[and]... temperatures in excess of about 800 C° are lesspreferred since such high temperature can significantly reduce the capacity..." Petr's patent states that the optimal temperature of his invention is 850 C°. Petr had discovered a degree of heating not previously invented by anybody else.
The idea in Petr's patent application was found to be an invention. The stuff in the Carnahan(USF) & Knotts(Florida Progress) application was not an invention. The examiner rejected the Carnahan(USF) & Knotts(Florida Progress) application. Carnahan(USF) & Knotts(Florida Progress) did not contest the inventorship issues and the outcome is final.
According to Florida law, USF has always had a duty to ensure that the intellectual property rights of its employees were protected. The statute which applies to powers, patents, copyrights, and trademarks in the Florida State University system says:
USF's director of sponsored research, who was familiar with Sec. 240.229, acknowledged that Petr was, during his employment at USF, among the "university personnel" the statute describes.
If in fact, as the State says, that the Florida Progress project did involve the potential development of a patent, then Dr. Carnahan, the General Counsel's office, and the Division of Sponsored Research clearly violated Fla. Stat. 240.229, for failing to enter into a written contract establishing Petr's property rights.
During trial the State falsely told the Jury that Petr had no ownership rights in the invention, saying that Dr. Carnahan(USF) and Mr. Knotts(Florida Progress) were the sole inventors, and that Petr was not.
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