Legal Issues for Employee Inventors

About the Course: Inventors do not have the luxury of becoming engrossed in their research to the exclusion of their legal obligations. Employers rely on their researchers to honestly report who are the rightful inventors listed on patents and to play a constructive role in the patenting process. Failure to understand their duties to disclose inventions, make assignment of their inventions or to cooperate with their (former) employers post-employment can result in legal censure as well as a cessation of royalty payments. The following are among the issues discussed during this highly informative session: What are a researcher’s obligations under Rule 56 to track prior art that comes to his attention? What actions committed by researchers can lead to charges of inequitable conduct? What can cause a researcher to lose his status as a named inventor on a patent from the time of patent filing to the time of a patent being granted? What are the implications of joint patent ownership among inventors in terms of infringement action? What are triggering events for an inventor to seek a release from his obligations to assign inventions to his employer? Why are researchers often required to sign Visitor Confidentiality Agreements when touring other laboratories? How do inventor assignment obligations differ outside of the US compared to within the US? How might various state laws protect employees against overly broad agreements to assign inventions? What are typical post-employment obligations required of researchers? What consequences might a researcher face if he chooses not to fulfill his post-employment obligations? Is it wise to allocate financial benefits deriving from patents to inventors based on the number of claims each inventor contributes to the patent? How does the filing of provisional patents affect the publication date of the non-provisional patents? How accurate are the assignment records maintained by the United States Patent and Trademark Office? What is the legal standing of “patent pending” notifications? How is inventor status affected when continuations, continuations-in-part, and divisionals are filed?How is the expiration date of these child patents calculated? Course Leader: Kelly Merkel, Patent Agent, Winston & Strawn Kelly is currently a Patent Agent in the New York office of Winston & Strawn working primarily on patent preparation and prosecution, patent searching, opinions, valuation and general business consultation for multinational corporations. Kelly’s experience includes serving as the Director of Patents for the Cincinnati-based firm Wolfe LPA, serving as Chief IP Counsel for Ideal Standard International in Brussels, Belgium and serving as Assistant General Counsel, Intellectual Property for American Standard’s global Bath & Kitchen business. Kelly has notable experience in drafting, prosecution and management of complex patent and trademark applications and extensive transactional experience including intercompany and intracompany licensing of patent, trademark and intangible assets on a global scale. Prior to working for American Standard she worked for Ladas & Parry in New York and Hoffmann & Baron in New Jersey. Kelly has written and spoken extensively on patent law in the context of the USPTO. She is admitted to the USPTO, the Court of Appeals for the Federal Circuit, and the State and District Courts of New Jersey. She is a Certified Patent Valuation Analyst (CPVA), a certified Project Management Professional (PMP) and the current editor for the Journal of Legal Technology Risk Management.
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