Patent Ownership and Inventorship: Avoiding Pitfalls in Defending Against Infringement and Enforcing Patents

Overcoming Challenges With Joint Inventorship, Common Ownership, and Former Employee-Inventors

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

Conducted on Wednesday, July 14, 2021

Recorded event now available

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Course Materials

This CLE course will guide patent counsel on the pitfalls of collaboration between individuals and entities in an invention. The panel will discuss challenges, including common inventorship and former employee-inventors, and how the courts have treated these issues. The panel will discuss lessons from the decisions that minimize litigation and enforcement risks when prosecuting a patent.


Scientific discoveries are rarely solo endeavors. Rather, inventive breakthroughs usually result from collaborative efforts between individuals. In many instances, such efforts also involve multiple entities such as companies and academic institutions. This collaboration between individuals and entities can lead to various inventorship and patent ownership pitfalls in enforcing patents and defending against infringement suits.

Inventors may move between companies and industries; they may change employers in the same field. Such changes give rise to inventorship and ownership issues that may trap the unwary in litigation.

Listen as our authoritative panel of patent attorneys examines how these issues, including joint inventorship, common ownership, and former employee-inventors, have played out in courts and what lessons can be learned from those decisions and applied during prosecution such that companies and individuals can protect themselves in potential, future litigation.



  1. Challenges resulting from collaboration in inventing
    1. Joint inventorship
    2. Common ownership
    3. Former employee-inventors
  2. Recent decisions
  3. Best practices to avoid pitfalls in defending against infringement


The panel will review these and other key issues:

  • What are the ownership pitfalls of collaboration between individuals and entities in inventing?
  • What are the steps for counsel in prosecution to reduce the likelihood of ownership pitfalls in enforcement?
  • What lessons can be learned from recent decisions addressing issues related to collaboration in invention?


Burgy, Adriana
Adriana L. Burgy

Finnegan Henderson Farabow Garrett & Dunner

Ms. Burgy focuses on opinion work, client counseling, patent prosecution and management, and litigation in the...  |  Read More

DeRoo, Pier
Pier D. DeRoo

Finnegan Henderson Farabow Garrett & Dunner

Mr. DeRoo has broad experience in strategic client counseling and patent litigation before U.S. district courts and the...  |  Read More

Renison, Andrew
Andrew E. Renison

Finnegan Henderson Farabow Garrett & Dunner

Mr. Renison’s chemistry and life sciences practice focuses on U.S. district court litigation with a particular...  |  Read More

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