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Assignment of Inventions

What Would the Perfect Employee Agreement Look Like?

Lawyers strive for perfection in their work, but time constraints, budgets, and other factors work against us. Also, perfection is not always the same thing in every circumstance. It is interesting, however, to contemplate...more

The Importance of Getting Inventorship Right: A Cautionary Tale in Two Cases

U.S. patent law elevates the importance of “the inventor” to an extent unseen in the rest of the world. Unlike many other countries, ownership of patent applications in the United States initially vests in the inventors...more

2016’s Top Patent and Trade Secret Developments for Chemistry and Nanotechnology

While 2016 saw several significant IP developments regarding the USPTO claim construction standard and the standard of review of USPTO decisions, the following three developments may have the greatest impact on how in-house...more

Federal Circuit Review | October 2016

by Knobbe Martens on

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

Ten Common Intellectual Property Mistakes

by Snell & Wilmer on

Mistake No. 1 - Not Obtaining an Obligation to Assign Inventions From Employees and Contractor - Example: Employee/contractor agreements do not: (a) assign rights to you in inventions made for you; (b) require the...more

Inappropriate Invention Assignments, Confidentiality and non-compete Agreements - Common Small Business Owner Mistakes

by Poyner Spruill LLP on

Pay Me Now or Pay Me Later is a series of short tips on common legal mistakes small business owners make. Tip # 3 - Ensure employees, especially key employees, enter the appropriate invention assignment,...more

North Carolina Supreme Court Denies Employee's Claim to Patent Ownership Based on Pay Dispute with Employer

Under the “hired to invent” doctrine, employees who develop intellectual property during the course of their employment generally have no ownership rights to such innovations. Earlier this month, the North Carolina Supreme...more

Trade Secrets and Lies (Silicon Valley – Episode 21)

Episode 21 is a delightful maze of plots, plot twists and omens. At Pied Piper, Richard fails in his attempt to go over CEO Action Jack’s head and have Laurie, the investor, force Jack to scrap his Box and build the consumer...more

Statutory Requirements for Invention Assignment Provisions

by Fisher Phillips on

You may have spent time drafting (or having your lawyers draft) enforceable restrictive covenants to protect your company's confidential and proprietary information, goodwill, and customer relationships, but have you ensured...more

Proper Inventorship Still Matters, Even With a Proper Assignment

by McNair Law Firm, P.A. on

In a few recent cases, we see that failing to properly name inventors in a patent application can lead to unnecessary troubles for a company. This is true whether the assignment document is an employment agreement or an...more

Patent Issues Arising from Consulting Agreements (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016))

by Winstead PC on

In a recent dispute between two medical device companies, a consultant’s alleged contributions to Angioscore patents became a central issue (TriReme Med., LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. 2016)). The dispute...more

Who Owns the Patent?: The Validity of Automatic Assignment Provisions

by Foley & Lardner LLP on

The U.S. Court of Appeals for the Federal Circuit is currently considering a petition for en banc rehearing of the “automatic patent assignment” rule announced in the Court’s 1991 decision in FilmTec Corp. v. Allied-Signal,...more

Founders (Legal) Checklist

In prior posts, this blog has discussed some specific issues that affect your start-up, from incentive plans, to early IP protection and hiring your team. But the number of topics, and more importantly, the number of...more

Applying for a Waiver From U.S. Manufacturing Requirements For Federally Funded Intellectual Property

by Mintz Levin on

Countless ideas and inventions are developed at U.S. universities every year, often with federal funding. Many of these important ideas could not be commercialized for the public’s benefit without the Bayh-Dole Act, which...more

The Days of the Vultures (Silicon Valley – Season 2 Finale)

This season’s finale of Silicon Valley provided Richard with only the briefest moment of victory before he once again faces losing Pied Piper. First, the arbitrator rules that because Richard used a Hooli computer while...more

Do We Have the Right to Sell Our Products/Services?!

by Lane Powell PC on

Intellectual property (IP) due diligence is an assessment of the IP owned or used by a company and third-party IP rights that may impact the company’s business. More often than not, companies do not think about IP due...more

Assignment Consideration Can Be Representation, Support and Opportunity - Memorylink Corp. v. Motorola Solutions, Inc.

by McDermott Will & Emery on

Addressing whether a patent was properly assigned and whether claims of inventorship fraud were properly barred by the statute of limitations, the U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s summary...more

Blog: The ABCs of PIIAAs: Protecting Employee-Generated IP

by Cooley LLP on

Companies seeking to avoid employment disputes and to secure intellectual property rights to their employees’ inventions should make sure that all employees have signed confidentiality and inventions assignment agreements. ...more

Make Sure You Own the Patent You Think You Do.

by Robins Kaplan LLP on

The biotechnology industry has a long history of successfully licensing and litigating university technology. That trend looks to be continuing, even as other industries have taken aim at limiting patent enforcement. Ten U.S....more

Stanford University v. Roche Molecular Systems, Inc.’s Impact on Government Contracts

by Burns & Levinson LLP on

A decision by the Supreme Court of the United States on June 6, 2011 has a great impact on the interpretation of the Bayh Dole Act as well as assignment of contracts relating not just to the Bayh Dole Act but to assignments...more

You Think You Own Your IP? Think Again!

by Foley & Lardner LLP on

If we asked you whether you own your intellectual property, your answer most likely would be a swift and unqualified “yes.” Not so fast… Did you invent your idea while at school or working for your prior employer? Has...more

Early Assignment of your Invention as a Method to Maintain Priority Rights in a European Patent Application

by Winstead PC on

The European Patent Office (EPO) has been a desirable venue for seeking patent protection in Europe. For instance, a patent application granted by the EPO can provide patent protection in many European countries, such as the...more

Do you own the intellectual property created by your employees?

by PilieroMazza PLLC on

With the days of patent and copyrights applying mainly to tangible objects being long gone, data and patent rights are becoming more important than ever. Now, every process, software, procedure, and other intellectual...more

News From Our Own Vermont Backyard: Proposed Legislation On Password Privacy And Ownership Of Inventions

by Downs Rachlin Martin PLLC on

Last month the Vermont Legislature kicked off its 2013-2014 Legislative Session, and already a couple of bills have our attention here at the IP Stone....more

LightSwitch: Intellectual Property Law Bulletin - 1st Quarter, 2013 - January 2013

by Nexsen Pruet, PLLC on

In This Issue: S.C. Supreme Court Upholds Confidentiality and “Holdover” Inventions Assignment Clauses in Employment Agreement; The America Invents Act: The Big Lesson Learned In The First Year; and The U.S.Patent And...more

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