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June 20, 2022
Cadwalader Intellectual Property Group chair Dr. Dorothy Auth last week was a featured speaker at the Joint Patent Practice Continuing Legal Education’s (JPPCLE) annual one-day seminar that gathers legal industry professionals to discuss recent cases, legislation, and regulations involving patent law and practice.
Auth both moderated the litigation panel and presented as part of the discussion about securing ownership rights in patents.
In particular, Auth discussed how employers can secure ownership rights of patented inventions in view of the recent Federal Circuit Court’s decision in Omni MedSci Inc. v. Apple Inc. and its impact in view of another Federal Circuit case, Teets v. Chromalloy Gas Turbine.
In particular, Omni MedSci Inc. v. Apple Inc. held that a written assignment must include a present statement of transfer in order to transfer ownership from the inventor to another person, including an employer. In contrast, the court in Teets held that if an employee is tasked with solving a particular problem and, in fact, solves that problem with a subsequently patented invention, that patent may be owned by the employer by virtue of an implied-in-fact contract. Auth noted, accordingly, that these cases illustrate that multiple means are possible under current U.S. law to transfer patent rights to an employer.
Other topics discussed on the litigation panel included the current state of the law with regard to reverse payments, product hopping and sham litigation; the on-sale bar applied to patent protection; and written description requirements in computer cases.
The event was sponsored by the Intellectual Property Associations of New York, New Jersey, Pennsylvania and Connecticut.