Conflicting Invention Assignment Clauses
In conflicting invention assignment agreements, the “does hereby assign” language of Cetus’ Agreement was operative to immediately assign the invention and vest title of the invention to Cetus instead of the inventor’s employer – Stanford.
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- Posted in: assignments, ownership
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Disclose Information Related to Your Invention
After a patent application is filed with the United States Patent and Trademark Office, each individual involved with the patent application has a duty to disclose information that is material to the patentability of the invention. Failure to disclose all material information coupled with an intent to mislead the Patent Office may jeopardize the validity [...]
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Interview the Examiner Prior to First Office Action
The Patent Office has continued the First Action Interview Pilot Program effective October 1, 2009 until April 1, 2010. During the examination process, the examiner assigned to a patent application typically does not hold an interview with the applicant until after the examiner renders an initial Office Action. An interview prior to the [...]
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Product By Process Claims
The claims define the metes and bounds of patent protection afforded under a patent. The claims can be drafted in many different ways. For example, the claims can recite a method, an apparatus or a product by process. A method claim recites various steps which if performed would infringe the patent. [...]
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What types of inventions are eligible for patent protection?
There are four general categories of inventions that are eligible for patent protection. Specifically, they are processes, machines, manufactures and compositions of matter or their improvements. The following case, In re Ferguson, 2007-1232 (Fed. Cir. 2009) involves the issue of whether an invention to a new process is eligible for patent protection. [...]
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- Posted in: Patent Eligible Subject Matter
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What Types of Inventions are Obvious?
Inventors frequently ask whether the Patent Office will grant them a patent on their invention. The general answer is that the Patent Office will grant a patent on inventions that are novel (i.e., new) and non-obvious in light of technology existing at the time the patent application was filed. The government does not have an [...]
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Inventor’s Notebook
The following case illustrates the importance of documenting an invention’s development. Under current U.S. Patent Laws, the first-to-invent is awarded a patent on an invention and not the first to file a patent application. The reason is that the first-to-invent rule appears to be more fair compared to the “first to file” rule. The first-to-invent [...]
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Patent Assignments
Patentees can profit from the patents they hold by licensing their technology. Alternatively, patentees can sell their technology to others through an assignment of the patent. In either case, it is important to carefully lay out the terms and conditions of the license or assignment to make clear the intent of the parties.
In The Euclid [...]
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Contributory Infringement Viewed at Component Level
In Ricoh Company, Ltd. v. Quanta Computer, Inc., 2007-1567, (Fed. Cir. 2008), Quanta sold computer drives having various components. For the purposes of this case, one of those components was specially designed to infringe Ricoh’s patent. Although the computer drive itself did not directly infringe the Ricoh patent, Ricoh contends that Quanta should be held [...]
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- Posted in: Infringement, contributory infringement
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Warranty of Non-Infringement For Sale of Goods
The California Uniform Commercial Code (UCC) discusses the default rules that govern the rights and responsibilities of buyers and sellers of goods. §2-312(3) states that “unless otherwise agreed a seller who is a merchant regularly dealing goods of the kind warrant that the goods shall be delivered free of the rightful claim of any third [...]
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