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Continued employment may constitute consideration to support an agreement modifying terms of employment, and courts will narrowly construe terms excluding inventions from assignment to the employer
- Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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- USA
- -
- March 29 2013
In Yale Preston v. Marathon Oil Co, the Federal Circuit confronted the issue of whether an invention by an employee was properly assigned to his
Respondent's motion to compel based on declaration from a former employee that complainant's counsel were in contact with current employees of respondent was denied where complainant's counsel represented to ALJ that no such contact had occurred
- Jeffer Mangels Butler & Mitchell LLP
- -
- USA
- -
- December 17 2012
Respondent ClearCorrect Pakistan (Private) Ltd. ("CCPL") moved to compel complainant Align Technology, Inc. ("Align") to produce documents and supplement responses to interrogatories
Parties’ employees may maintain work product protection, just not in this case
- Holland & Knight LLP
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- USA
- -
- November 14 2012
Judge Cole denied defendant and counter-plaintiff Fujitsu’s motion for a protective order prohibiting plaintiff and counter-defendant Tellabs from getting discovery regarding Fujitsu’s inspection of Tellabs’ optical scanner in this patent litigation regarding optical amplifiers
Continued employment is sufficient consideration for IP assignment agreements
- McDermott Will & Emery
- -
- USA
- -
- August 30 2012
Addressing the issue of patent ownership in the employment context, the U.S. Court of Appeals for the Federal Circuit found that an employment contract executed after the employee began working for the employer operated to automatically assign the rights to two patents to the employer with no additional consideration other than continued employment
Some assignments are more equal than others
- Bradley Arant Boult Cummings LLP
- -
- USA
- -
- August 14 2012
Companies often have policies requiring employees to transfer rights to inventions developed by the employee on company time using company resources
Federal Circuit looks at intellectual property terms of employment agreement to decide patent ownership
- Foley & Lardner LLP
- -
- USA
- -
- August 1 2012
In Preston v. Marathon Oil Co., the Federal Circuit examined the terms of an employment agreement in order to determine the owner of the patents at issue
Federal Circuit reminds us that IP assignments in employee agreements are important
- Hunton & Williams LLP
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- USA
- -
- July 31 2012
The U.S. Court of Appeals for the Federal Circuit recently reminded us of something we all know: employee agreements that include an express assignment of intellectual property are effective
Practice tips for employee IP assignment agreements
- Foley Hoag LLP
- -
- USA
- -
- July 19 2012
A recent Federal Circuit decision discussing the effect of an Employee Intellectual Property Assignment Agreement upon the ownership of inventions made by the employee (Preston v. Marathon Oil Co., Nos. 2011-1013, -1026 (Fed. Cir. July 10, 2012) (decision here)) offers a number of practice pointers
Preston v. Marathon Oil Co.
- Baker & Hostetler LLP
- -
- USA
- -
- July 18 2012
Even if we assume state law governs the issue and that state law would take a broader view of conception than would be applied normally in the patent context, we still find that an invention necessarily requires at least some definite understanding of what has been invented
General counsel update
- Herbert Smith Freehills LLP
- -
- China, European Union, Germany, Hong Kong, Indonesia, Mongolia, Singapore, United Kingdom, USA
- -
- July 11 2012
This is the thirtieth in our series of general counsel updates which aim to summarise major developments in key areas
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