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Patents Employee Inventors

Holland & Knight LLP

Seventh Circuit Opinion Reminds of Need to Identify Trade Secrets with Particularity

Holland & Knight LLP on

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

Womble Bond Dickinson

Inventor Assignments – Problems on the Horizon

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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

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (April 26-30): The Potentially Limited Life Of IP Assignment Provisions In Employment Contracts

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

Porter Hedges LLP

Seemingly Simple Things that Are Often Done Wrong: Patent Assignments and The German Act On Employee Inventions

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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

Kidon IP

Employees or Independent Contractor Generated IP (Part 1)

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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

Fenwick & West LLP

Avoiding Loss of Title to Inventions Made Under Federal Funding as New Bayh-Dole Requirements Affect Patent Rights

Fenwick & West LLP on

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

Knobbe Martens

Federal Circuit Review - December 2018

Knobbe Martens on

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

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

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

PTAB Strategies and Insights - December 2018

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

Sunstein LLP

August 2018 IP Update - Revisions to Bayh-Dole Act Regulations Governing Rights to Federally Funded Inventions

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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

Knobbe Martens

Federal Circuit Review - February 2018

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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

Downs Rachlin Martin PLLC

Are You Sure You Own That Patent?

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

Carlton Fields

If Your Employment Agreements Use This One Word, Ownership of Your Patents May Be in Jeopardy

Carlton Fields on

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

Bradley Arant Boult Cummings LLP

Don’t Just Agree to Transfer Patent Rights—Do It!

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

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