A Cautionary Tale when Dealing with Third Party Developed Intellectual Property

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A recent Federal Circuit Court of Appeals decision highlights the need to ensure that contracts with third parties ensure that any intellectual property developed is owned by the company.  In TriReme Med., LLC v. AngioScore, Inc., TriReme sued to correct inventorship on some AngioScore patents directed to angioplasty balloon catheters.  AngioScore had hired a consultant, Dr. Lotan.  Dr. Lotan was not named as an inventor in any of the AngioScore patents at issue.  TriReme, motivated by a concern that AngioScore may sue for patent infringement, acquired from Dr. Lotan, all of his interest in the subject AngioScore patents. 

AngioScore offered up the consulting agreement executed with Dr. Lotan in defense.  AngioScore asserted that it obtained all rights in all inventive works by Dr. Lotan. 

The Federal Circuit disagreed.  The court found that the agreement did not give AngioScore rights to Dr. Lotan’s inventions developed or made prior to the agreement and remanded the case back to district court to determine whether the language in the agreement grants AngioScore rights in any inventive developments made by Dr. Lotan after that execution of the agreement.

What’s the take away here?  When contracting with any third party, be sure to cover all aspects of ownership of any intellectual property developed during the term of the agreement.  Also ensure that all parties to the agreement have a clear understanding as to who is entitled to what when dealing with IP developed by the third party either before or after the term of the agreement. 

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Trade Secrets Bill is Approved by Senate Judiciary Committee

On January 28, 2016, the Senate Judiciary Committee approved the Defend Trade Secrets Act. If the bill is made into law, it would create a cause of action in federal court for theft of trade secrets.

Most recent changes to the bill included issues relating to employee mobility, the statute of limitations, restrictions on seizure orders, and enhanced damages. The Committee adopted language that provides immunity for whistleblowers to protect employees or others from potential trade secret claims if they present information confidentially to relevant government officials or agencies in connection with a violation of law. The bill, S. 1890, now moves to the full Senate for consideration.

What is the take away here?  If a federal trade secrets bill is passed, qualifying companies and individuals can use the federal court system to bring theft of trade secret actions or other trade secret causes of action against an alleged party.  In addition, the federal trade secrets law, where applicable, would provide a unified and harmonized body of law where each of the 50 states has full authority in this area of law at present and not all of the states’ laws on trade secret matters are unified. 

In addition, there are an increasing number of trade secret cases where the defendant is a foreign individual or entity.  The federal laws in this matter would aid in bringing these parties into court and having greater strength to administer the court’s punishment.  Finally, because federal courts presently handle all other aspects of intellectual property law: patents, trademarks and copyright, it is appreciated that the federal judiciary may be better equipped to handle trade secret cases as well.  We will continue to keep an eye on this subject.

Protecting your innovative developments is critical to any organization.  Having the right person to help you make those decisions is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

IP Europe Gears Up to Level Patent Playing Field

An article today in Bloomberg.com discussed the formation of a new consortium: IP Europe.  The consortium is made up of some of Europe’s largest intellectual property stakeholders.  These include Ericsson, Airbus, French phone company Orange SA and train manufacturer Alstom. 

IP Europe plans to lobby the European Commission in hopes to make it easier for European based companies to compete with the US and China and other countries to capitalize on their innovations.  The group will concentrate on key industry patents which through industry standardization become necessary for all industry participants.  These tend to provide continuously decreasing revenues over time.   

The new IP Europe consortium will be headed by former EU Commission Official Morgens Peter Carl. 

Protecting and enforcing your intellectual property is critical to any organization.  Having the right person to help you make those decisions is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.