Tag Archives: Assignment

Federal Circuit Looks At Intellectual Property Terms Of Employment Agreement To Decide Patent Ownership

In Preston v. Marathon Oil Co., the Federal Circuit examined the terms of an employment agreement in order to determine the owner of the patents at issue. Although aspects of the agreement were interpreted under state (Wyoming) law, the decision may be relevant to many employment agreements.… Continue reading this entry

Companies May Be Disappointed By USPTO's Proposed Rules For Inventor Oath/Declaration

The USPTO has published proposed rules to implement changes to the inventor oath/declaration requirements contained in the America Invents Act. The proposed rules recognize the changes to 35 USC §§ 115 and 118, but also reflect 35 §§ 111(a) and 371, which were not amended. Companies who were hoping for significant changes to the inventor … Continue reading this entry

USPTO Considers Requiring More Information On Patent Ownership

In a Federal Register Notice issued November 23, 2011, the USPTO announced that it is considering collecting more information on patent ownership. Although the Notice is titled “Request for Comments on Eliciting More Complete Assignment Information,” the intent appears to be to require applicants to update the USPTO on any changes in ownership at specific … Continue reading this entry

Federal Circuit Takes A Close Look At Patent Assignment Language

In MHL Tek, LLC v. Nissan Motor Co., the Federal Circuit took a careful look at patent assignment language and determined that an earlier assignment encompassed all asserted patents, and so the later assignment to the plaintiff was ineffective, leaving the plaintiff with no standing. The Patents At Issue The three patents at issue name … Continue reading this entry

Supreme Court Says Bayh-Dole Act Does Not Trump Inventor Rights

In Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., the Supreme Court upheld the basic principle of U.S. patent law that rights to an invention vest initially in the inventor(s), and affirmed the Federal Circuit’s determination that the Bayh-Dole Act does not upset the rule of inventor ownership. The … Continue reading this entry