News & Analysis as of

Assignment of Inventions Inventors

McDermott Will & Emery

PTO Issues Guidance, Request for Comment on AI Inventorship

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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

Womble Bond Dickinson

Inventor Assignments – Problems on the Horizon

Womble Bond Dickinson on

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

K&L Gates LLP

K&L Gates Triage: Five Key Questions for Academic Medical Centers About Patent Ownership and Enforcement

K&L Gates LLP on

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

Knobbe Martens

Perhaps Assignor Estoppel Survives at the PTAB…via the District Court

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A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - December 2018: Federal Circuit Holds No Assignor Estoppel in AIA Proceedings

Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more

Knobbe Martens

CardiAQ - An IP Success Story

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At the recent ACC-Socal Double Header Event, Knobbe Martens presented, "CardiAQ - An IP Success Story." ...more

Knobbe Martens

Advanced Video Technologies LLC v. HTC Corporation Et Al.

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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

Mintz - Intellectual Property Viewpoints

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

Knobbe Martens

Federal Circuit Review | October 2016

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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

Burr & Forman

Proper Inventorship Still Matters, Even With a Proper Assignment

Burr & Forman 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

McDermott Will & Emery

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

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

Cooley LLP

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

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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

Robins Kaplan LLP

Make Sure You Own the Patent You Think You Do.

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

Winstead PC

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

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

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