Williams Mullen's Trending Now - An IP Podcast - Intellectual Contracts
Protecting IP Through Employment Law
Precedential and Key Federal Circuit Opinions - LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [OPINION] (2021-2348, 5/21/24) Moore, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark - Stoll,...more
On September 15, 2023, New York Governor Kathy Hochul signed a law that made dramatic changes to the enforceability of invention assignment provisions in employment agreements and likely in related agreements including offer...more
Precedential Federal Circuit Opinions - QUALCOMM INCORPORATED v. INTEL CORPORATION [OPINION] (2020-1589, 2020-1590, 2020-1591, 2020-1592, 2020-1593, 2020-1594, 7/27/21) (Moore, Reyna, Stoll) - Moore, J. Vacating final...more
Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440: In the late 1990s, Csaba Truckai invented and patented a device to treat abnormal uterine bleeding. Truckai assigned his interest to his company, Novacept, which in turn...more
Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal No. 2020-1785 (Fed. Cir. Apr. 29, 2021) - The Federal Circuit’s only precedential patent decision this week comes on appeal from the International Trade...more
On this week’s episode, George Summerfield and Kelly Plummer explore five key questions academic medical centers often face with respect to patent ownership and enforcement. Their discussion covers a number of issues,...more
Hint: The standard employment agreement you have been using that includes an assignment of IP provision might not be sufficient. - In the United States, employers don’t own an employee’s or consultant’s inventions unless...more
Federal Circuit Summaries - Before Newman, O’Malley, and Reyna. Appeal from the United States District Court for the Southern District of New York. Summary: A co-inventor did not transfer ownership interests in a...more
On September 14, 2017, District Judge Robert W. Sweet (S.D.N.Y.) denied the motion of Ferring B.V., et al. (“Ferring”) to dismiss for lack of standing a patent infringement suit brought by Allergan, Inc., et al. (“Allergan”)....more
This is a question that I often am asked when inventors have been working with us for an extended period of time. In the past, we could use an existing, executed declaration in the family for a new member, but not after...more
Are you starting a new company or business venture? Launching an exciting new product or expanding into a new business line? Congratulations. Just remember, if you wind up with a high-growth opportunity, it can often pay big...more
Physicians are well-positioned to generate new inventions and thereby improve the treatment of their patients. As a result, physicians have historically been some of the best and most active inventors in the United States. ...more
In This Presentation: Overview of Messes to Avoid: • Split Ownership • Agreements to Agree • Agreements with Unclear/Improper: – relation to prior agreements – term – royalty rate – execution ...more
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
The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor’s required declaration statements into an...more
Oftentimes, a patent case will not be decided by patent law, but by employment law. If an invention was developed by an employee or a third-party contractor without the proper agreements in place, the company may find itself...more
As we discussed in our inaugural posts in this series, after management, the most valuable asset for most startups can be their intellectual property (IP). And as such, it is important for a startup to own its intellectual...more
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