• Posts Tagged ‘inventorship’

    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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    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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    Patent Ownership in Germany

    by  • July 14, 2015 • patent • 0 Comments

    Here’s an interesting little patent case involving the ownership of patents under foreign law, in this case German law. The plaintiff’s principal, Werner Schnaebele, worked in Germany for a predecessor of the defendant. He signed one employment agreement that didn’t have any provision for ownership of inventions conceived of by employees, meaning local law...

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    Unexciting Patent Ownership Decision

    by  • July 15, 2012 • patent

    No one else seems to have reported much on this case, which is understandable – there’s not really any new ground covered.  But it is a Federal Circuit decision, so I’ll give you a brief summary. Yale Preston was an employee of Marathon Oil Co. A few days after his employment began, at the...

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    Don’t Get Greedy

    by  • May 28, 2012 • patent

    Tahir Mahmood believed that he was a co-inventor of a RIM patent.  He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology. In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694....

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    The Missing Inventor

    by  • April 15, 2012 • patent

    I love cases where the defendant goes back and finds another potential inventor. Stemcells, Inc. v. Neuralstem, Inc. shows some of the ways this can play out – in this case, standing, and the rarely-invoked bona fide purchaser in good faith defense. The patents in dispute are 7,115,418entitled “Methods of proliferating undifferentiated neural cells”...

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    Inventing a Chemical Compound

    by  • February 18, 2012 • patent

    Plaintiff Olusegun Falana was hired to work on synthesizing chemical compounds for use in liquid crystal display screens. The compounds had to perform over a range of temperatures. Falana developed a protocol for synthesizing compounds and, using the protocol, synthesized “Compound 7.” Compound 7 had a much improved temperature range, but it still wasn’t...

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    Standing for Correction of Inventorship

    by  • October 23, 2011 • patent

    A brief primer on when an employer has standing to bring a claim under Section 256 of the Patent Act, asking that a non-party employee be added as an inventor: you’ll have to show that you will have rights to the patent you would not otherwise have, or, more specifically, that the employee had...

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    I Swear I Invented It First

    by  • November 30, 2008 • patent

    Judge Alsup from the patent-heavy Northern District of California court has taken advantage of the almost certain appeal of patent cases by writing an “Appendix” to point out what he perceives as an unfairness in patent jurisprudence. He asks the Federal Circuit to address the burden of proof in swearing behind references. The patent...

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