Patent Ownership and the Impact of Interactions with Others

Risks to Ownership, Managing Agreements With Other Parties, Patent Prosecution Strategies

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


Conducted on Thursday, March 5, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on the impact interactions with others can have on patent ownership. The panel will discuss the interplay between conception and joint inventorship that can become critical to patent ownership in departing-employee and customer-interaction scenarios. The panel will also examine the implications of interactions with others and will provide best practices for protecting a company's interests.

Description

Patents and other IP are often one of the most valuable parts of a company and an essential piece of its business plan. However, companies often fail to consider the risks that arise when they interact with other parties.

For example, companies often hold pre-agreement technical discussions that do not end in a formal collaboration agreement. While there may be an NDA, they often do not address patent ownership or control. Further, scientists may be involved in initial discussion about an idea but then leave to join another company. Or perhaps customer feedback has resulted in improvements to a product. These circumstances may impact whether the company completely owns any resulting patent.

Patent counsel typically include provisions addressing intellectual property ownership and control when drafting collaboration agreements. However, agreements are often not in place that cover all potential interactions with others parties. Reliance on the contracts could prove problematic for patent ownership.

Listen as our authoritative panel of patent attorneys discusses how interactions with others can endanger a company’s exclusive patent ownership. The panel will examine the risks to patent ownership that may arise during interactions with others. The panel will discuss the implications of interactions with others and will provide guidance for protecting a company’s interests.

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Outline

  1. Risks to patent ownership from interactions with others
  2. Implications of interactions with other parties
  3. Guidance for protecting the company's patents
    1. Managing agreements with other parties
    2. Patent prosecution strategies in light of inventorship/ownership challenges
    3. Identifying and evaluating inventorship/ownership issues
    4. Risks to patent ownership from interactions with others

Benefits

The panel will review these and other key issues:

  • How can interactions with others jeopardize patent ownership at risk?
  • How should patent counsel manage agreements to minimize the risk to patent ownership?
  • What steps should counsel take to identify potential patent ownership issues?

Faculty

Breier, Adam
Adam M. Breier, Ph.D.

Partner
McNeill Baur

Dr. Breier’s practice focuses on patent prosecution, client counseling, and PTAB proceedings in the biotechnology...  |  Read More

McNeill, Rebecca
Rebecca M. McNeill

Partner
McNeill Baur

Ms. McNeill offers intellectual property strategy and advises on new application preparation, patent prosecution (U.S....  |  Read More

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