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
For New York employers, fall has brought with it more than just cooler temperatures, thanks to a wave of activity from Governor Kathy Hochul’s desk (after a busy legislative summer). Below, we highlight six significant...more
On September 15th 2023, Governor Kathy Hochul signed into law an amendment to the New York Labor Law. The amendment adds a new Section 203-f to the Labor Law, which addresses the assignment of inventions made by employees....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
On September 15, New York enacted Labor Law Section 203-f, limiting the enforceability of invention assignment provisions in employment agreements. Under the new law, employers do not have rights to any employee inventions...more
The New York State Legislature passed Senate Bill 5640 / Assembly Bill 6829 on June 6, 2023, which, if the governor signs, would amend the Labor Law and add a new section 203-f, regulating the use and enforceability of...more
Actuators are remotely operated mechanized devices used in a variety of applications, such as opening and closing valves. They are often operated hydraulically, which requires them to have their own valves. Maintaining the...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
Today’s big news in the patent world is probably the CVSG in American Axle and the potential for a new Supreme Court case on subject-matter eligibility. But the day-to-day work goes on at the Federal Circuit, including with...more
Laura Morelli and Charles de Raignac will host a two part series of webinars over two mornings, focused on employee inventions, in which you will learn everything you need to know to set up your compensation policy for...more
The vast majority of patent litigation involves a patent or a patent portfolio that has been assigned at least once during its life. Yet seemingly simple and ubiquitous patent assignment documents are blundered by even...more
Federal grants are an important source of funding for many businesses and research institutions. The Bayh-Dole framework provides contractors the ability to retain title to an invention developed using federal funding, but...more
Assignor Estoppel Does Not Apply in the IPR Context - In Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, 2017-1577, the Federal Circuit held that the plain language of 35 U.S.C. § 311(a) unambiguously...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
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Rules affecting recipients of federal research and development funding have recently been revised, adding new deadlines and obligations. Changes to the regulations implementing the Bayh-Dole Act went into effect on May 14,...more
Intellectual property assets are the lifeblood of many businesses today. No employer wants to see those assets walk out the door when an employee leaves. Employee invention assignment agreements are one crucial tool for...more
When you think about protecting a business firm’s intellectual property (IP), usually you think about protecting it from infringement by external actors. But there also are internal threats — even mortal ones — to the...more
Improperly Drafted Employment Agreement Leads to Dismissal of Patent Case Due to Lack of Standing - In Advanced Video Technologies LLC v. HTC Corporation et al., Appeal Nos. 2016-2309, 2016-2310, 2016-2311, the Federal...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
What is the difference between an employment agreement that says “I hereby assign inventions I create during my employment to my employer,” and one that says “I will assign inventions I create during my employment to my...more
Patent owners and employers: Pay attention to the words in assignment and employment agreements that transfer patent ownership to you. A recent Federal Circuit case once again emphasizes the need to use particular language to...more
On June 14, 2016, S.D.N.Y. District Judge Colleen McMahon granted defendants HTC Corporation, HTC America, Inc., Blackberry Limited, Blackberry Corporation, and Motorola Mobility LLC’s (collectively “Defendants”) motion to...more