As in all areas of Law, Patent Law evolves over time and is molded by cases decided in the Supreme Court and the Federal Circuit Courts.  According to “Patent Law and Practice, Sixth Edition” by Herbert F. Schwartz and Robert J. Goldman, here are the major cases currently impacting patent law:

• In re Bilski (2008, Fed. Cir. en banc), in which the Federal Circuit established a new standard for the patentability of business method processes and algorithms.
• eBay, Inc. v. MercExchange, LLC (2006,S.Ct.), in which the Supreme Court overturned the test applied by the Federal Circuit relating to the availability of permanent injunctions in patent litigation
• MedImmune, Inc. v. Genentech, Inc. (2007, S.Ct), in which the Supreme Court expanded the availability of declaratory judgment jurisdiction for companies seeking to challenge the patent of another
• KSR Int’l v. Teleflex, Inc., (2007, S.Ct), in which the Supreme Court revisited the law of invalidity for obviousness for the first time in a generation, revising the standard applied by the Federal Circuit since the 1980s
• In re Seagate Tech., LLC (2007, Fed. Cir. en banc), in which the Federal Circuit reversed 24 years of decisions and established a new standard for assessing willful infringement, a precursor to an award of increased damages and attorneys’ fees Critical new issues addressed.

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Take a look at your employment agreements, covenants not to compete, or non-disclosure agreements. Especially if you work in the tech sector, you can be sure that one, if not all, of these documents (which are typically signed as a condition of employment) include some sort of assignment of ownership of the invention. These assignments are usually of the form that say that anything and everything that the employee invents while employed at the company belongs to the company. Pretty straight forward, right? Maybe…

What do you do when you invent something and your employer thinks it’s theirs? What do you do when your employee invents something and they think it’s theirs?

Let’s say that the employee comes up with an invention during work hours, using company resources, in a field that the company does business in? I think that few would argue that the company has some rights to the invention.

Well, what about something that the employee invents at home on his personal time? What if it is related to the company’s business? What if it is not? Now, the topic gets a little murky. (This is where I’d say, “Please consult an attorney.” – but let’s discuss anyway!)

There is a case that was just decided this past February in the U. S. Court of Appeals for the Federal Circuit. From the opinion:

The ultimate question here is whether the interest of Dr. David Barstow (“Barstow”) in these patents was previously assigned to his former employer, Schlumberger Technology Corporation (“Schlumberger”). Barstow, a computer scientist, worked for Schlumberger from 1980 until 1994. At the start of his employment, Barstow entered into an employment agreement[...]

The bottom line of the ruling was that the CAFC didn’t actually decide who owns the patent… but it didn’t just let the company walk away with it either. Instead they remanded the case back down to the distric court for further discovery.

Because we hold that further jurisdictional discovery was warranted, we do not reach the issue of whether the district court correctly held on the previous record that the patents in suit fell within the scope of Barstow’s employment agreement with Schlumberger.

Whichever way this turns out, one thing is certain: No matter what side you are on… cover your assets!