Tag Archives: Patent

Business, Intellectual Property, Patents

Patent Joint Ownership Issue

Joint ownership can arise from joint inventorship, such as where two or more individuals directly or indirectly collaborate as inventors. This often times happens unwittingly, as the two inventors may not have worked on the development of the invention together or at the same time. Sometimes, the primary inventor does not realize that the other inventor’s contribution raises that individual to the level of inventor. This is because the inventors do not have to make the same type or amount of contribution and the inventors do not have to contribute to every claim in the patent application.

Ethicon was the exclusive licensee of the “sole” inventor of the patent and Ethicon sued U.S. Surgical for infringement. U.S. Surgical investigated and located a “missing” (ie. unnamed) joint inventor and then proceeded to negotiate a license from him. Ethicon challenged the validity of the license. The courts upheld the validity of the license because the “missing” inventor, as a joint inventor, was a joint owner of the entire patent. Ethicon v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998), cert. denied, 525 U.S. 923 (1998).

The cautionary tale here is that even a one percent contributor to a patent will be a joint owner of the entire patent. An owner of a patent who believes that he has exclusive control of the patent may be sadly mistaken and find himself suddenly competing with another company.

The key for the “sole” inventor is to make sure that all others (ie. employees, etc.) who may work on any aspect of the invention have valid employement agreements or valid joint venture agreements that contain the proper assignment clauses. These agreements must be entered into prior to any work by the employee or contractor.

For the purchaser of a patent, proper due diligence will be key to understanding where the potential risks may arise. Due diligence should include review of agreements with employees or contractors working on the development of the intellectual property. Drafting strong purchase agreements and transaction documents can help protect the purchaser. Effective guarantees, warranties, indemnification and assignment clauses can lessen the financial impact, if something unpleasant occurs following the purchase of the intellectual property.

Intellectual Property, Patents

Expired Patents: Update

On June 10, 2010, the Federal Circuit, in Pequignot v. Solo Cup Co., No. 2009-1547 (Fed. Cir. June 10, 2010), affirmed the judgment of the U.S. District Court for the Eastern District of Virginia, which had entered summary judgment in favor of Solo for “false marking” related to Solo’s practice of marking expired patents on its beverage cup lids.

The Federal Circuit held that, under 35 U.S.C. § 292(a), a product embodying an expired patent is indeed an “unpatented article”, but a plaintiff must demonstrate that the defendant intended to deceive the public in order to succeed under § 292. The court stated that a rebuttable presumption is created when a plaintiff shows that the defendant knowingly made false statements.  The defendant may rebut this presumption by showing by a preponderance of the evidence that it did not intend to deceive the public.  The court also noted that the presumption is weaker in cases where the markings are for expired patents that once covered the marked products.  Solo, which had relied on advice of counsel and weighed the high costs of removing the markings, was able to rebut Pequignot’s evidence that it intended to deceive.

In its holding, the court reasoned that Solo acted in good faith by seeking advice of counsel, and that it had been driven by a desire to avoid the high costs and business disruption that retooling would have created.  The court also reasoned that by adding to the “may be covered” language to its products’ packaging, Solo had acted in good faith to provide a truthful representation of the patent coverage for its products.

This decision will put a damper on the false-marking claims.  However, some defendants may not have the same advice-of-counsel excuse.