Patent Ownership Rights: Structuring Assignment and Employment Contracts
Key Provisions, Implications for Litigation, Recent Court Treatment
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide counsel on securing patent ownership to 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.
Outline
- 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
Benefits
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?
Faculty
Bret A. Hrivnak
Partner
Hahn Loeser & Parks
As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international... | Read More
As a patent and trademark attorney, Mr. Hrivnak counsels clients on the protection of U.S. and international intellectual property, including patents, trademarks, copyrights, trade secrets and domain names. He manages worldwide IP portfolios and develops global strategies for IP protection. Mr. Hrivnak’s IP experience includes prosecuting and defending disputes arising under state, federal and international laws, including proceedings before the Board of Patent Appeals and Interferences, the Trademark Trial and Appeal Board and the World Intellectual Property Organization. His representation also includes preparing and reviewing agreements, including licenses, assignments, joint ventures and development agreements, supply agreements, M&As, and other IP transactions. He also addresses antitrust issues that may arise in such transactions or otherwise during the course of his clients’ business activities.
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D. Brian Kacedon
Partner
Finnegan Henderson Farabow Garrett & Dunner
Mr. Kacedon is a recognized authority in IP transactions having drafted and negotiated hundreds of agreements across... | Read More
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.
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Kevin E. Noonan, Ph.D.
Partner
McDonnell Boehnen Hulbert & Berghoff
Dr. Noonan's practice involves all aspects of patent prosecution, interferences, and litigation. He represents... | Read More
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.
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