Property, intangible

a blog about ownership of intellectual property rights and its licensing

Patent Ownership Not a Federal Question (at least in this case)

Is patent ownership a question of federal law? It depends. In the case of Millepede Marketing Ltd. v. Harsley, it’s not.

The recent Supreme Court decision Gunn v. Minton* provides the analytical framework: a matter is one for federal jurisdiction if (a) federal law creates the cause of action asserted or (b) a federal issue is: (1) necessarily raised, (2) actually disputed, (3) substantial, and (4) capable of resolution in federal court without disrupting the federal-state balance approved by Congress.

The question was whether Harsley had a duty to assign his patent application to his employer. The federal court didn’t have jurisdiction under (a) because the issue was a question of contract or employment law, not patent law.

The federal court didn’t have jurisdiction under (b), either. Millepede argued that the federal question was whether the unassigned patent was the same invention as an earlier assigned patent, but that could be resolved as an admission (Harsley claimed priority to the earlier patent) or the question could be decided based on an employment agreement, therefore the claim didn’t necessarily raise patent law. Nor did the claim satisfy the remaining elements 2-4 needed to have federal jurisdiction.

And there is no such thing as common law equity jurisdiction (last reported in 1960), it’s jurisdiction under 28 U.S.C. § 1338(a) or not at all. Case closed.

Millepede Marketing Ltd. v Harsley (D.D.C. March 7, 2013)

* In a footnote: “This Court notes that the Supreme Court’s decision in Gunn, which delineated the four factors applicable to analysis of whether state-law claims ‘arise under’ federal law, and thus satisfy the jurisdictional mandate of §1338(a), issued on February 20, 2013, after the briefing in the case. No party to this case has filed any notice of additional authority since Gunn was decided.” Bench slap?

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