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Patent Derivation, Inventorship Disputes and Trade Secret Misappropriation: Protecting Proprietary Research

Recording of a 90-minute premium CLE webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Wednesday, June 12, 2019

Recorded event now available

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This CLE course will guide patent counsel on the intersection of patent derivation proceedings, trade secrets, and breach of contract. The panel will address the legal strategy and risks associated with enforcement efforts, as well as how to mitigate risks associated with employees and research partners misusing valuable and confidential research and development knowledge.


A patent applicant may petition to institute a derivation proceeding. For derivation, the petitioners must prove they originally conceived the derived invention and communicated the derived invention to the accused. However, there are risks. Derivations are unpredictable and could create a potential admission of prior art to the petitioner's application.

Further, companies need to vigilantly protect their proprietary research; in particular, companies need to guard against the risks when employees leave or information is shared with third parties. Whether using strict employment or other agreements or thorough off-boarding procedures, it is essential for companies to mitigate risk.

Listen as our authoritative panel examines the intersection of patent derivation proceedings, trade secrets and breach of contract, and how companies and counsel deal with protecting proprietary research in the first-inventor-to-file era. The panel will discuss the legal considerations relevant to these efforts and offer guidance for protecting ongoing research.



  1. Derivation proceedings, trade secrets, contracts
  2. Protecting ongoing research
    1. Departing employees
    2. Sharing proprietary research with third parties


The panel will review these and other key issues:

  • What are the risks of instituting derivation proceedings?
  • What is the interplay among derivation proceedings, inventorship disputes, trade secret misappropriation, and breach of contract?
  • What steps should companies and counsel take to minimize the risk of losing proprietary research?


Brody, Peter
Peter M. Brody

Ropes & Gray

Mr. Brody has been successfully litigating intellectual property cases and other complex disputes in federal and state...  |  Read More

McKeown, Scott
Scott A. McKeown

Wolf, Greenfield & Sacks

Mr. McKeown is a shareholder with Wolf, Greenfield & Sacks in Washington D.C. and a professorial Lecturer in...  |  Read More

Prugo, Filko
Filko Prugo, M.S., J.D.

Ropes & Gray

Mr. Prugo is a first-chair litigator and USPTO-registered patent attorney. He has been extensively involved in all...  |  Read More

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