Patents, IP Assignment Agreements, Patent Ownership

Best Practices for Diligencing Chain-of-Title for Post-AIA Patent Applications with Assignee-Applicants

Ropes & Gray LLP on 8/15/2025

Patent diligence in the context of M&A and other types of commercial transactions typically involves confirmation of a patent’s chain-of-title ownership, from initial inventors through to the current assignee-owner. The...more

Federal Circuit Reversal in Assignment Clause Case Highlights Importance of Contract Language in Intellectual Property Ownership

Womble Bond Dickinson on 5/24/2024

In a split opinion issued Tuesday, and based on language in an assignment clause of a contract, the Federal Circuit overturned a district court's summary judgment that Core Optical lacked standing to sue Nokia, Cisco, and...more

K&L Gates Triage: Five Key Questions for Academic Medical Centers About Patent Ownership and Enforcement

K&L Gates LLP on 9/19/2019

On this week’s episode, George Summerfield and Kelly Plummer explore five key questions academic medical centers often face with respect to patent ownership and enforcement. Their discussion covers a number of issues,...more

Federal Circuit Holds Tribal Immunity Does Not Apply To Inter Partes Review

Dorsey & Whitney LLP on 7/24/2018

Last Friday, in an anticipated decision, the U.S. Court of Appeals for the Federal Circuit decided a controversial case regarding the St. Regis Mohawk’s ability assert sovereign immunity in inter partes review proceedings. ...more

Raniere v. Microsoft Corporation

Knobbe Martens on 4/23/2018

Federal Circuit Summaries - Before Lourie, O’Malley, and Wallach. Appeal from the United States District Court for the Northern District of Texas Summary: When a case is dismissed with prejudice for lack of standing,...more

The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB

Knobbe Martens on 3/8/2018

The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. See Allergan and the Saint Regis Mohawk Tribe...more

Are You Sure You Own That Patent?

Downs Rachlin Martin PLLC on 2/20/2018

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

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

Carlton Fields on 1/25/2018

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

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

Bradley Arant Boult Cummings LLP on 1/25/2018

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

PTAB Designates As Precedential A Decision Finding Assignor Estoppel Is Not A Defense in IPRs

Knobbe Martens on 8/5/2017

The PTAB recently designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in IPR proceedings in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290,...more

PTAB Applies Collateral Estoppel to Exclude Purported Patent Owner

Knobbe Martens on 3/28/2017

The PTAB issued an order applying collateral estoppel to determine that one purported owner of U.S. Patent 7,215,752 and U.S. Patent 7,844,041 (the “challenged patents”) had no authority to act as the patent owner in...more

North Carolina Supreme Court Denies Employee's Claim to Patent Ownership Based on Pay Dispute with Employer

Parker Poe Adams & Bernstein LLP on 6/28/2016

Under the “hired to invent” doctrine, employees who develop intellectual property during the course of their employment generally have no ownership rights to such innovations. Earlier this month, the North Carolina Supreme...more

Proper Inventorship Still Matters, Even With a Proper Assignment

Burr & Forman on 3/15/2016

In a few recent cases, we see that failing to properly name inventors in a patent application can lead to unnecessary troubles for a company. This is true whether the assignment document is an employment agreement or an...more

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