• patent

    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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    IP Rights and NDAs

    by  • December 8, 2015 • patent • 0 Comments

    You have someone sign an NDA that says this: If you can’t read it, it says 4. Beverly Johnson shall not directly or indirectly acquire any interest in, or design, create, manufacture, sell or otherwise deal with any item or product, containing, based upon or derived from the information, except as may be expressly...

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    What Went Wrong?

    by  • November 30, 2015 • patent • 0 Comments

    Recently I’ve been thinking about the US rules of contract interpretation versus the approach used in other countries, UK law in particular. As I understand it, under UK law the courts have more latitude in interpreting the language of the agreement to derive what the parties intended than what we allow under US law....

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    You Had One Job

    by  • September 21, 2015 • patent • 0 Comments

    The court: Exploiting the patent-in-suit in these cases, U.S. Patent No. 5,781,788 (the ‘788 patent), was AVT’s sole reason for being. The only precondition to Plaintiff’s fulfilling its singular purpose was its acquisition of title to the ‘788 patent. Obtaining ownership of the patent was AVT’s sine qua non, the only thing Plaintiff absolutely...

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