Fishing for Joint Patent Ownership Under ‘BASF v. CSIRO’

Richard Hung, Jacob Nagy, and Evangeline Phang authored an article for The IP Strategist discussing a recent Federal Circuit opinion in BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation (CSIRO) that sheds light on the process for settling patent co-ownership disputes pursuant to an underlying agreement.

“Had BASF developed an argument based on the survival provision’s application to the ownership provision, it might have garnered more sympathy from the court,” the authors wrote. “The majority in BASF determined that the only guidance for intellectual property developed after the MTEA’s [Materials Transfer and Evaluation Agreement] termination appeared in the MTEA’s ownership provisions. Per the majority, BASF’s interpretation of the MTEA ‘made no commercial sense,’ as ‘[the] MTEA had a two-year term, and the parties knew that each would learn lessons from the joint work and would continue work in the field when the agreement ended.’ In her dissent, Judge Newman emphasized the MTEA’s survival clause, which required that the ‘joint ownership provisions remain[ed] in effect after [the MTEA’s] expiration.’ The majority did not address this provision at all, and BASF referred to it only in passing in its opening brief. This failure to emphasize the survival provision therefore may have been a missed opportunity for BASF.”

Read the full article.