Understanding the Law of Joint Ownership of Patents – Right to Impede Infringement Suits in 2015
Licensing is not the only way to share rights to a patent. Like other property, patents may be jointly owned by numerous parties; whether through invention or co-operation. Joint Ownership of Patents can greatly restrict an owner’s exercising of rights and this can vary dramatically between jurisdictions.
In absence of an agreement to the contrary, each joint owner of a patent may use and sell the patented invention without the permission of, and any accountability to, the other joint owners. A collaboration agreement, patent assignment documents, or both must be carefully drafted to ensure that enforcement rights are protected. This risk is high-lighted in STC.UNM v. Intel Corp. STC.UNM attempted to sue Intel for infringement in continuation of a patent jointly owned by the University of New Mexico and Sandia Corp. UNM and Sandia also were co-owners of the patent in suit. However, Sandia refused to join the lawsuit, and there was no agreement in place between UNM and Sandia that required Sandia to do so. The district court dismissed the case, and ruled that co-owners of a patent have a substantive right under patent law to abstain from joining infringement suits brought by their co-owners against third-parties.
In a two hour, LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the significant legal and regulatory issues regarding Understanding the Law of Joint Ownership of Patents and the Right to Impede Infringement Suits
This 2-hour Webcast will discuss the following key provisions:
- Joint Ownership of Patents- An Overview
- Infringement Suit- A Perspective
- Implications of Joint Ownership
- Protections and Considerations of Patent Rights
- Single-Entity Ownership
- Regulatory Issues and Best Practices for Patent Ownership
- Potential Lawsuits Against Patent Infringement
- Regulatory Updates
Cadwalader, Wickersham & Taft LLP
Sughrue Mion, PLLC
- How joint ownership came about, pre and post AIA rules
- Litigation considerations
- Ownership requirements / standing to sue
- Difference between assignment and a license – exclusive assignments
- Co-ownership in a patent
- Licensing considerations
- International issues
- International Trade Commission (standing rules)
- Federal Rules Procedure 19
- When a party can join forcefully
Who Should Attend:
- Patent Law Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- Patent Consultant
- Design Patent Attorneys
- Intellectual Property Lawyers
- Trademark Professionals
- In-House Lawyers
Alexander J. Hadjis is a patent trial attorney. He is the Chair of Cadwalader’s International Trade Commission (ITC) Patent Litigation Practice and the Co-Chair of the firm’s Technology Industry Practice Group.
Mr. Hadjis represents clients as lead trial counsel before the federal district courts and the ITC. He has tried over a dozen patent cases and litigated many more over the course of his twenty year career.
Prior to joining private practice, Mr. Hadjis clerked for the Honorable Wilson Cowen of the U.S. Court of Appeals for the Federal Circuit. He received his J.D. from The University of Pittsburgh School of Law, an LL.M. from George Washington University Law School, and a B.S.E.E. from The Ohio State University.
Alexander J. Hadjis is a patent trial attorney. He is the Chair of Cadwalader’s International Trade Commission (ITC) Patent Litigation …
Mr. Chandran Iyer is a Partner in the Washington, DC, office of Sughrue Mion, PLLC. Chandran practices in the area of intellectual property law with a focus on patent litigation and licensing. Chandran is a registered patent attorney, with extensive experience litigating various IP matters in federal and state courts. Specifically, his experience includes litigating patent cases relating to computer software, internet technologies, electrical and mechanical arts, and medical devices, . His practice also includes extensive legal and related proceedings before the U.S. Patent and Trademark Office.
Mr. Chandran Iyer is a Partner in the Washington, DC, office of Sughrue Mion, PLLC. Chandran practices in the area …
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Method of Presentation:
NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Areas of Professional Practice
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About Cadwalader, Wickersham & Taft LLP
At Cadwalader, Wickersham & Taft LLP, we put over 200 years of legal experience and innovation to work for you today. Our Intellectual Property team helps clients maximize their investments in intellectual property and protect their market assets, from enforcing and defending IP claims in litigation and trials and providing expert opinions, to evaluating, selling and licensing intellectual property and establishing IP protection programs. Cadwalader attorneys have deep experience across a broad range of technologies — mechanical and electro-mechanical applications, computer hardware and software, business methods, financial services, cellular telephone and semiconductor technologies, sophisticated medical devices, chemical and pharmaceutical matters, and complex biotechnologies. We have earned a reputation for crafting innovative business and financial solutions and developing precedent-setting legal strategies to achieve our clients’ goals. The result is simple: we stand out from our competition because we help you stand out from yours.
About Sughrue Mion, PLLC
From our inception in 1957 to the present we have focused solely on IP. We cover every aspect of patent and trademark law. We have obtained more U.S. patents than any other law firm in the world. We are always one of the top two firms in the annual rankings by number of issued patents. We provide counseling and opinions on the full range of patent issues in every technology from biosimilars to nanotechnology. Sughrue has been a leader in interference law for over 40 years and has earned an international reputation in this arcane field. We are expert in ex parte and inter partes reexamination proceedings. And we are already steeped in Post Grant Review under the America Invents Act, proceedings for which we are uniquely qualified due to our deep prosecution and inter partes experience before the PTO.
Each of our trademark partners has decades of experience in all aspects of trademark and unfair competition practice, from searching, prosecution and registration at the U.S. PTO and abroad to internet issues to federal court litigation to enforce or defend our clients’ rights. We are Trademark Trial and Appeal Board experts; one of our trademark partners literally wrote the book on TTAB procedure and law. Our trademark clients include some of the most well known brands in the marketplace, and our trademark partners are consistently recognized, internationally and domestically, as some of the best trademark attorneys in the world.
We have a long and excellent track record in federal court and Section 337 ITC litigation in patent and trademark cases at both the trial and appellate levels. Our litigators have successfully handled every type of patent and trademark case in a wide variety of industries over the past 50 plus years. Our litigators combine litigation and patent and trademark expertise to provide the best possible representation to our clients in intellectual property disputes.
Sughrue is an international firm in every sense of the word. We are experienced in handling worldwide patent and trademark portfolios, including domestic and foreign inter partes matters. We have major clients who are headquartered abroad, for example, in Japan, Korea, India and Europe. We have an office in Tokyo, San Diego and our headquarters in Washington, D.C. Our attorneys speak many languages and travel the world on a regular basis for meetings with clients, conferences and to present seminars on U.S. litigation, the America Invents Act and other IP topics.