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Below are speaker notes from a ~20 minute "Act" of a meeting.
Attached at the bottom of the page are:
* powerpoint presentation
* handout
The "Act" has 3 sections/fact patterns. The fact patterns were developed by taking the facts from a important case and modifing the facts slightly and changing the parties names. Note all fact patterns short and independent from all other acts.
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MedEng Technology Acquisition - March 23, 2010- BF Inn of court
MedEng Technology Acquisition - March 23, 2010- BF Inn of court
Due diligence and other special issues in IP transactions with universities
Part I Bill, Nicole and Steve
MedEng LLC wants to acquire the University of Athleticism's (UA) IP (patent(s) on gene panel that increase human athleticism)
Meeting:
Corporate Manager from MedEng
In house Council for MedEng - Bill
In house Council for MedEng - Nicole
In house Council for MedEng - Stephen
Meeting to discuss the MedEng acquition of UA technology
- Universities can present many inventorship and ownership issues
- MedEng needs to perform thorough Due Diligence
- Early in acquisition process - Initial Due Diligence results reported by MedEng's In house Attorneys to MedEng Business manager
Outline of Presentation - Special issues in Transaction with Universities
Outline of Presentation - Special issues in Transaction with Universities
- Focus on Due Diligence issues for 3 Key UA patents
I. - Patent A - Issue has Inventor assignment after PCT filing - Bill
II. - Patent B - Issue: Researcher signs both an employee agreement with UA and
a Work project assignment agreement with Swoosh company. - Nicole
III. - Patent C - A patent assignment assigning all continuation applications was
ambiguous to a previously issued continuation patent not specifically identified in
the assignment. - Stephen
IV. - (if time) Special issues with University IP transactions (Bill)
- Bayh -Dole
- or special issues with BioTech start up companies.
I. Patent A Scenerio: - RSP Bill
I. Patent A Scenerio: - RSP Bill
Inventors - UA prof Dr. Honeydew and a consultant "Beaker" (non-UA employee)
Inventors - UA prof Dr. Honeydew and a consultant "Beaker" (non-UA employee)
The research team at UA consisted of Dr. Bunsen Honeydew, a professor at UA and Beaker, a consultant brought in to assist with the project
As a tenured professor, all the work developed by Dr. Bunsen Honeydew, is to be assigned to UA, as per his contract with the school
Since Beaker was a consultant, he had a different contract with UA.
Through long hard work, the team of Dr. Bunson Honeydew and Beaker were able to isolate an array of genes that would increase Athleticism.
Timeline
US PPA filed lists Dr. Honeydew and Beaker as inventors
Paper published discloses A
PCT filed within one year of PPA claims priority back to PPA
- Applicant UA
- Dr Honeydew and Beaker assign PCT to UA
Beaker assigned PPA to UA 13 months after PCT application filed
Q. Any Issues
Issue: Are there any problems with the PCT patent application (in view of Beaker's late assignment 13 months after the PCT application was filed) ?
Issue: Are there any problems with the PCT patent application (in view of Beaker's late assignment 13 months after the PCT application was filed) ?
A. See Edwards Lifesciences AG v Cook Biotech Incorporated
* whomever does this section can review the Case with the Inn
Q. Can you amend the applicant's names after filing PCT request ? ___
II. PATENT B scenario
II. PATENT B scenario
Timeline
Dr Honeydew signs employee agreement to UA
Dr. Honeydew signed a “Copyright and Patent Agreement” (“CPA”) that obligated him to assign his inventions to the U of A.
The CPA provided: “I agree to assign or confirm in writing to U of A/or Sponsors that right, title and interest in…such inventions as required by Contracts or Grants.”
Dr. Honeydew sought the assistance of Swosh Company in developing the technology integral with the patent B gene pannels. Dr. Honeydew, while still working at UA, signs a"project confidentially Agreement" with Swoosh company. See below
Dr. Honeydew signed Swoosh’s “Project Confidentiality Agreement” (“PCA”), which provided: “[Researcher] will assign and doe[es] hereby assign to Swoosh, [his] right title, and interest in each of the ideas, inventions and improvements” that he may devise “as a consequence of” his work with Swoosh.
UA filed Patent application B naming Dr. Honeydew as inventor
Dr. Honeydew signs assignment of application B to UA 3 years after application B filed.
Q. Any issues:?
With U of A ownership rights in application B
See Standford v. Roche:
Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832 (Fed. Cir. 2009)
* whomever does this section can review the Case with the Inn
III. Patent C scenario
III. Patent C scenario
Patent assignment assigning all continuation applications was ambiguous to previously issued patent
Timeline
Patent C issues
CIP C' issues (Continuation-in-part from C)
Dr. Honeydew assigns C and all continuations applications to UA. See Assignment below.
ASSIGNMENT
I, Dr. Honeydew, [address], in consideration for $25,000.00 and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged do hereby sell and assign to U of A. [address] all my interest in the United States, Canada and in all other countries in and to my US, Canadian, and European applications for patents and issued U.S. patent, namely:
1. Issued U.S. Patent C. …..
2. US Application No. 08/839,292 filed on April 17, 2009,
3. US Application No. 08/731,248, filed on October 11, 2008 (now abandoned),
4. EPO Application No. 99122342.1, filed November 9, 2008, and
5. Canadian Application No. 2288630, filed November 8, 2007,
any and all divisional applications, continuations, and continuations in part together with the entire right, title and interest in and to said applications, and to all divisional applications, continuations, and continuations in part thereof, the right to claim priority therefrom under the International Convention, and any and all Letters Patent which may issue or be reissued for said invention to the full end of the term for which each said Letters Patent may be granted; and hereby authorize the ….
Issues:
Question: Does UA have ownership of the CIP ?
Answer -- See Euclid v. Vector (Fed. Cir. 2009)
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Euclid Chemical Co. v. Vector Corrosion Technologies, Inc.
Wednesday, April 01, 2009
In this case, the Federal Circuit addressed whether a patentee can assign the rights of a patent not mentioned in the language of an assignment.
Euclid, original owner of U.S. Patent No. 6,217,742 (‘742 Patent) appealed District Court’s holding that the Assignment at issue unambiguously transferred the ‘742 patent to Vector. The Assignment, dated December 20, 2001, is signed by Jack Bennett, the sole inventor, and executed in Ohio.
The ‘742 patent is a continuation-in part of US Patent 6,033,553 (the ‘553 patent) listed in the Assignment and was issued before the execution date of the Assignment.
The District Court held that the Assignment unambiguously assigned all rights in the ‘553 patent and any and all continuations-in-part thereof, which included the ’742 patent according to the District Court.
The Federal Circuit disagree, ruling that the Assignment was ambiguous with respect to the ‘742 patent, and noting that the ’742 patent was issued on April 17, 2001, which was before the date of the Assignment. Further, the Assignment referred to another issued patent (U.S. Pat No. 6,033,553) expressly.
Under Ohio law, the Federal Circuit asserted that when confronted with an issue of contractual interpretation, the role of a court is to give effect to the intent of the parties to the agreement. Where a contract is ambiguous, the CAFC noted that a court may consider extrinsic evidence to ascertain the parties’ intent, under Ohio law.
The Federal Circuit further held that the Assignment includes language that suggests that it was not intended to effect an assignment of the ‘742 patent because the Assignment specifically assigns all interest in and to the inventor’s “US, Canadian, and European applications for patents and issued US patent”, but this language refers merely to “applications” plural and “issued US patent” singular. Since such language can be interpreted as excluding the ‘742 patent, the Federal Circuit declared the Assignment is ambiguous requiring that extrinsic evidence be considered to determine the intent of the Assignment. Accordingly, the case was remanded to the District court to determine whether the Assignment, in light of the extrinsic evidence, transferred the ‘742 patent rights to Vector.
In concurring with the majority of the issue of assignment of the ‘742 Patent, Judge Newman stated that the intent of the parties was not necessary in determining whether the rights of the ‘742 Patent were assigned. In reaching this conclusion, Newman states that the Assignment referred to only one patent (U.S. Pat No. 6,033,553) and the technology assigned of all other applications differed from that of the ‘742 patent.
IV. Special issues with University IP transactions (Bill)
IV. Special issues with University IP transactions (Bill)
- Bayh -Dole
- or special issues with BioTech start up companies.
- Need know how - probably joint research agreement
- probably need to join up with another Bio companies to share costs and get expertise
- need to do due diligence to watch for improvement patents by professors that could put limits on your technology
- Or Create Act problem
- Blocking problem
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