Patent Ownership Rights: Structuring Assignment and Employment Contracts
Key Provisions, Implications for Litigation, Recent Court Treatment
Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Patent
- event Date
Thursday, April 10, 2025
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
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This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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This CLE webinar will guide counsel on securing patent ownership of inventions created by employees or independent contractors. The panel will discuss essential provisions and strategies when structuring employee assignments and contractor agreements. The presenters will discuss the implications for litigation when the assignment is not explicit and other pitfalls in structuring these agreements.
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across all technologies. He is designated as a Certified Licensing Professional. He has also successfully litigated multiple lawsuits and arbitrations based on his extensive transactional experience. Mr. Kacedon’s practice focuses on patent and technology licensing and litigation. In his transactional practice, he assists clients in conducting market assessments for their patents, conducts licensing negotiations, drafts licensing agreements, and participates in related litigations. His experience includes setting up and directing international patent licensing and enforcement programs, including one that resulted in more than 500 license agreements. Mr. Kacedon is a frequent presenter at legal and industry workshops and conferences and has served as adjunct professor teaching licensing at the George Washington University Law School.
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. Dr. Noonan also has over 20 years of experience as a molecular biologist, and is a founding author of the Patent Docs weblog, which focuses on biotechnology and pharmaceutical patent law. He has also filed amicus briefs to district courts, the Federal Circuit and the Supreme Court involving patenting issues relevant to biotechnology.
Most companies wrongly assume they automatically own the inventions created by their contractors and employees in the context of their employment. To avoid costly disputes, companies should be proactive in securing ownership of the invention.
The Federal Circuit has issued several decisions addressing the pitfalls of a company's attempt to secure the ownership of patent rights through an employment agreement. For example, in Whitewater West Industries Ltd. v. Alleshouse (2020), the court found that a provision in an employment agreement requiring assignment of post-employment inventions was invalid under California law. As a result, the company did not own the patent in question. Similarly, in Core Optical Technologies, LLC v. Nokia Corp. (2024), the court vacated a decision by the district court that an invention made by an employee was owned by his former employer.
To avoid disputes over patent ownership, counsel to companies must secure rights for employee-created or contractor-created inventions and ensure employees, consultants, and independent contractors sign confidentiality and invention assignment agreements.
Listen as our authoritative panel of patent attorneys discusses the patent ownership challenges facing companies with inventor-employees or contractors. The presenters will discuss key provisions and strategies when structuring employee assignment agreements and contractor agreements. The panel will also discuss the implications for litigation when the assignment isn't specific and other pitfalls when structuring these agreements.
- Employment contracts with patent inventors or contractors
- Ownership of IP created before, during, and after employment
- Key provisions in assignment agreements, including confidentiality and consideration provisions
- Potential pitfalls when structuring assignments
- Implications for patent prosecution and litigation and recent court treatment
- Best practices for ensuring ownership of employee-created inventions
The panel will review these and other key issues:
- What key provisions should counsel include in employee assignment agreements?
- What hurdles must counsel watch for to establish ownership of employee or contractor-created inventions?
- What strategies should counsel employ to ensure ownership of employee or contractor-created inventions?
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