[news 2009-2010]

Queen’s researchers’ inventorship upheld against LG Display

Oct. 29, 2010

KINGSTON, ON -- The United States Patent and Trademark Office has upheld a patent application filed by Queen’s University’s PARTEQ Innovations on behalf of Queen’s Chemistry researchers Suning Wang and Ruiyao Wang over a conflicting claim of inventorship by LG Display Company Ltd. of Korea.

Over eight years ago the Queen’s researchers created organic blue photoluminescent compounds useful in flat-panel displays such as computer monitors and TV screens.  Unlike previous blue-light-emitting compounds, which can lose colour intensity over time, the Queen’s technology offers longer-term stability and can be used to form thin films.  At the time, Xerox Research Canada Corp. was a supporting organization under an NSERC Strategic Research Grant that was funding the researchers’ work.

Shortly after the compounds were invented, the Queen’s researchers synthesized and sent a suitable quantity to Xerox for testing. Seeing potential value in the discovery, and expecting that the researchers and Xerox would eventually collaborate on developing applications of the compounds, PARTEQ and Xerox coordinated to simultaneously file patent applications on their respective areas of work.

Xerox ultimately decided not to license any rights to the compounds and later sold its business interests in this area, including related patents and applications, to LG.  A patent was granted to LG in 2007, after which the USPTO Board of Interferences realized that the Queen’s application was in conflict, and that the question of which group was first to invent had to be resolved under U.S. law.

“Happily this was not a case of litigation,” says John Molloy, President and CEO of PARTEQ. “Knowing that the Board proceedings around this would be protracted and difficult, we proactively sold our application to LG to expedite the process and consolidate ownership.”

The recent decision by the USPTO cancels the patent issued to LG, and cedes inventorship to the Queen’s researchers. A patent for their discovery of “Organic Luminescent Compounds and Methods of Making and Using Same” is expected to be granted shortly.   

“Obviously we’re very pleased with the USPTO’s decision,” says Mr. Molloy.  “It’s a validation of the quality of our intellectual property expertise. It shows that we provide strong, credible and substantive protection of Queen’s discoveries, even when measured against a patent owned by a multinational corporation.”

Contact:

John Molloy

President & CEO

PARTEQ Innovations

P: 613. 533. 2342

E: jmolloy@parteqinnovations.com