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