Patent Derivation, Inventorship Disputes and Trade Secret Misappropriation: Protecting Proprietary Research

A patent applicant may petition to institute a derivation proceeding. For derivation, the petitioners must prove they originally conceived the derived invention and communicated the derived invention to the accused. However, there are risks. Derivations are unpredictable and could create a potential admission of prior art to the petitioner's application.

Further, companies need to vigilantly protect their proprietary research; in particular, companies need to guard against the risks when employees leave or information is shared with third parties. Whether using strict employment or other agreements or thorough off-boarding procedures, it is essential for companies to mitigate risk.

Listen as our authoritative panel examines the intersection of patent derivation proceedings, trade secrets and breach of contract, and how companies and counsel deal with protecting proprietary research in the first-inventor-to-file era. The panel will discuss the legal considerations relevant to these efforts and offer guidance for protecting ongoing research.

1. Derivation proceedings, trade secrets, contracts
2. Protecting ongoing research
   1. Departing employees
   2. Sharing proprietary research with third parties

The panel will review these and other key issues:

• What are the risks of instituting derivation proceedings?
• What is the interplay among derivation proceedings, inventorship disputes, trade secret misappropriation, and breach of contract?
• What steps should companies and counsel take to minimize the risk of losing proprietary research?