Patent Ownership and Inventorship: Avoiding Pitfalls in Defending Against Infringement and Enforcing Patents
Overcoming Challenges With Joint Inventorship, Common Ownership, and Former Employee-Inventors
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide patent counsel on the pitfalls of collaboration between individuals and entities in an invention. The panel will discuss challenges, including common inventorship and former employee-inventors, and how the courts have treated these issues. The panel will discuss lessons from the decisions that minimize litigation and enforcement risks when prosecuting a patent.
Outline
- Challenges resulting from collaboration in inventing
- Joint inventorship
- Common ownership
- Former employee-inventors
- Recent decisions
- Best practices to avoid pitfalls in defending against infringement
Benefits
The panel will review these and other key issues:
- What are the ownership pitfalls of collaboration between individuals and entities in inventing?
- What are the steps for counsel in prosecution to reduce the likelihood of ownership pitfalls in enforcement?
- What lessons can be learned from recent decisions addressing issues related to collaboration in invention?
Faculty
Adriana L. Burgy
Partner
Finnegan Henderson Farabow Garrett & Dunner
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the... | Read More
Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the chemical, pharmaceutical, and biotechnology arts. She counsels her clients on a diverse range of patent issues. She assists clients on single-patent issues as well as complex matters involving multiple patents and applications requiring ongoing advice on patent portfolio strategy and development, with an eye towards litigation. From a patent prosecution perspective, she has drafted and prosecuted numerous patent applications domestically and internationally, guided and advised clients on complex procedural and legal issues surrounding clients' patent portfolios, developed and implemented strategic prosecution in support of ongoing litigation, generated strategies for maximizing investment in patent portfolios, and facilitated the identification of high-priority applications within patent portfolios.
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Pier D. DeRoo
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. DeRoo has broad experience in strategic client counseling and patent litigation before U.S. district courts and the... | Read More
Mr. DeRoo has broad experience in strategic client counseling and patent litigation before U.S. district courts and the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He has represented parties in dozens of proceedings before the PTAB, including as lead arguing counsel. His experience includes inter partes review (IPR), interference, reexamination, and ex parte prosecution appeal proceedings involving a range of technologies. He also counsels innovative and growing clients on a diverse array of patent matters. He has prepared numerous validity, infringement, and freedom-to-operate opinions for clients in the life science and chemical fields, drawing on his extensive litigation background. He also has significant experience managing patent portfolios and providing strategic prosecution guidance in the chemical and electrical arts.
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Yoonhee Kim
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Kim focuses on complex patent litigation before U.S. district courts and the Federal Circuit and on patent... | Read More
Mr. Kim focuses on complex patent litigation before U.S. district courts and the Federal Circuit and on patent prosecution in the chemical and pharmaceutical fields, including Hatch-Waxman litigation arising from the filing of Abbreviated New Drug Applications. His experience includes developing pre-litigation strategy, fact discovery, preparing witnesses, developing validity and infringement strategies, motion practice, taking and defending depositions, and handling day-to-day litigation activities. He also has experience handling contested proceedings before the PTAB, including interferences and inter partes reviews. In addition to his litigation practice, Mr. Kim frequently advises clients on various contracts, including collaboration agreements, nondisclosure agreements, and other types of IP transactions. His practice also includes preparing validity, infringement, and freedom-to-operate opinions and conducting due diligence investigations and portfolio reviews for clients in the petrochemical and pharmaceutical fields. Mr. Kim maintains an active patent prosecution practice, preparing and prosecuting U.S. patent applications and coordinating global patent portfolio management in the chemical and pharmaceutical arts.
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