• patent

    What It Takes to Get Attorneys’ Fees

    by  • January 30, 2017 • patent • 0 Comments

    This is a bit of a “duh” case from the Federal Circuit, a nonprecedential decision. The only surprising part of it is that the trial court, Judge Sparks in the Western District of Texas, didn’t impose even greater sanctions. It was quite a show of generosity. The patent-in-suit has a short chain of title;...

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    There Is Just No Way Around the Absent Patent Owner

    by  • January 3, 2017 • patent • 1 Comment

    I’m writing about an inventorship case mostly because I have to bone up before I speak at the AIPLA Mid-Winter Institute in a talk rivetingly titled “The Backlash from Mismanagement of Inventorship in Multi-Party Deals.” If you’re attending, consider Speedfit LLC v. Woodway USA, Inc. your homework assignment. The plaintiffs are an inventor, Aurel...

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    More on What Nunc Pro Tunc Means

    by  • December 5, 2016 • patent • 0 Comments

    One of my most read posts is “What Nunc Pro Tunc Means.” It means “now for then” in Latin, which is hardly much help. Extensive Google research tells me that it’s used to correct judicial orders, but that’s not what brings readers to my blog. In the IP field we typically use “nunc pro...

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    Read It Twice

    by  • November 7, 2016 • patent • 0 Comments

    Boy, is it hard to write an effective invention assignment for an employment agreement. First, under US law only a natural person can be an inventor, not a juristic person. When you have an employee whose job is inventing, the solution is to create an automatic assignment to the employer, which is generally done...

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    Dodged a Bullet

    by  • June 27, 2016 • patent • 0 Comments

    Awhile back I titled a blog “Pay Attention to This One.” People did. You can read in more detail about the facts in the appeals court opinion blogged here, but the crux is that an inventor had an oral agreement with his employer that he would be paid a bonus for his inventions in...

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    Suing the Patent Owner

    by  • May 2, 2016 • patent • 0 Comments

    As we all know, standing is difficult in patent cases. There are two types of “exclusive” licensees (in my view, making jurisprudence very confusing). First is the “virtual assignee” who has essentially all of the rights of the patent owner and can sue for infringement without having to join the patent owner. Second is...

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    Oh, Never Mind

    by  • April 25, 2016 • patent • 0 Comments

    When I started writing this post I was going to write about a case that had sussed out that there are different legal thresholds for determining ownership for purposes of prosecuting a patent versus what may be challenged by the PTO in an appeal of a rejection. But it turns out the conclusion was...

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    Owning an Invention vs. Owning a Patent

    by  • March 14, 2016 • patent • 0 Comments

    What is the difference between owning an invention and owning a patent? In University of S. Florida v. CoMentis, more money. A former employee of the University of South Florida (USF), Michael Mullan, invented technology related to Alzheimer’s disease. He assigned the patents to the Alzheimer’s Institute of America (AIA), who sued various defendants...

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