Risk Prevention Strategies: Ownership of Employee-Developed Inventions and Intellectual Property
On February 13, 2024, the US Patent & Trademark Office (PTO) issued a notice with examination guidance and request for comment regarding inventorship in applications involving artificial intelligence (AI)-assisted inventions....more
On September 15, 2023, New York Governor Kathy Hochul signed into law Senate Bill 5640, which adds Section 203-f to the New York Labor Law. Section 203-f creates statutory limitations on an employer's use of invention...more
New York state recently amended Labor Law Section 203-f, codifying a hurdle for employers who seek to claim ownership over an employee's inventions. The law, which is similar to laws enacted in other states[1], has three...more
On September 15, 2023, a new law was signed in New York that prohibits employers from requiring that employees assign certain intellectual property rights to their employer. This new law impacts policies and practices that...more
A recently enacted New York State law that took effect immediately restricts employers’ use of employment agreements which require that employees assign to their employer rights to inventions that were created by the employee...more
Employers take note: a series of recent developments could impact employment agreements across the country. SB 699: A New Addition to California Non-Compete Law- Under California Business and Professions Code Section...more
In recent weeks, New York enacted various employment laws that provide additional protections for New York employees. After reviewing the below, which summarizes the new laws in descending order of effective date, employers...more
New York State Governor Kathy Hochul continues to sign legislation emanating from a busy legislative session, including legislation rendering contractual assignment-of-inventions provisions unenforceable, prohibiting...more
On September 15, 2023, New York Governor Kathy Hochul signed into law a new section of the New York Labor Law limiting the assignment of inventions by employees to their employers. Specifically, Section 203-f of the Labor Law...more
The 2023 New York State Legislature recently concluded its legislative session (after being called back for two weeks to consider certain pieces of legislation). The session ended with a flurry of activity relevant to...more
New York state lawmakers passed a flurry of employment-related bills in the final weeks of the legislative session. The bills – which now head to Governor Hochul’s desk for consideration – aim to provide workers in the state...more
In recent years, there has been a shift across the U.S. to restrict the use of non-compete agreements. In fact, on January 5, 2023, the Federal Trade Commission (“FTC”) proposed a new rule that would effectively ban the use...more
In July 2022, the Seventh Circuit issued an opinion making it clear that employers must put in place written invention assignment agreements if they want to ensure ownership of employee inventions...more
What’s the difference between an employee and an independent contractor? Does it matter that you hired an engineer for your game in another country? What’s a PIIA? Wilson Sonsini Partners Jason Storck and Barath Chari know...more
Companies are transforming legacy systems, implementing automation and artificial intelligence tools, embedding digital capabilities into their products, shifting to cloud solutions and leveraging technology to better connect...more
A patent has the attributes of intangible personal property - it can be sold or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee. The patent law provides for the transfer or sale...more
Companies often hire employees to develop new products, improve processes, create new technologies, and develop new markets. But how should employers address the ownership of intellectual property created by their employees...more
Two weeks ago, the Supreme Court heard oral argument in Minerva Surgical Inc. v. Hologic, Inc. over the rather arcane issue of assignor estoppel. Stop - I can figuratively feel your eyes rolling after reading the phase...more
The US Court of Appeals for the Federal Circuit invoked “precedents that are relevant but not directly on point” to examine when employment contract provisions may require assignment of inventions conceived post-employment...more
In part 1, I reviewed patents and copyrights. In this post, I will discuss trade secrets, IP rights, and other protection measures. Trade Secrets - No federal or state statute expressly addresses initial ownership of...more
This post will provide an overview of key IP issues encountered when dealing with employees and independent contractors. We will cover the default ownership rules and rights for different types of IP and some tips on how to...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
On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more
Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more