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The Intellectual Property StrategistFeaturesIntellectual PropertyPatent Licensing and TransactionsPatent Litigation

Fishing for Joint Patent Ownership Under 'BASF v. CSIRO'

By Richard S.J. Hung, Jacob N. Nagy and Evangeline T. Phang
June 01, 2022

A recent Federal Circuit opinion sheds light on the process for settling patent co-ownership disputes pursuant to an underlying agreement. Although the precedential opinion does not change the rules of contract interpretation, it suggests considerations when drafting ownership agreements.

BASF Plant Science, LP v. Commonwealth Scientific and Industrial Research Organisation (CSIRO), Case Nos. 2020-1415, -1416, -1919, -1920 (Fed. Cir. March 15, 2022), arose from a two-year joint research and development project that began in 2008. Both parties were pursuing genetically modified plants that would produce a high quantity of Omega-3 fatty acids. These plants were to be primarily used as a nutritional supplement for farm-raised fish, enabling their Omega-3 fatty acid content to be similar to fish caught in the wild.

The plants' development required years of experimentation with a variety of desirable genes and existing plants. At one point, BASF and CSIRO determined that it would be worthwhile to combine their efforts under a two-year Materials Transfer and Evaluation Agreement (MTEA). The agreement allowed the companies to combine proprietary genes in their experiments, but the experiments ultimately did not produce a marketable outcome. In 2010, the parties went their separate ways, and both parties later brought separate products to market. In 2016, BASF discussed licensing CSIRO's related patent portfolio, but those talks were unsuccessful.

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