A Cautionary Tale when Dealing with Third Party Developed Intellectual Property



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.