Inventorship: Lessons from Recent Disputes (RECORDING)
Recorded On: 10/30/2019
The America Invents Act eliminated the express requirement that the patent applicant be the inventor. However, the law retains a requirement that all inventors be identified in patent applications. Disputes over inventorship can play out in the USPTO or in district court under a variety of cause of actions.
This webinar will look at recent disputes over inventorship to draw lessons for managers of IP and for litigators. Our panel includes a senior patent lawyer at a global pharmaceutical company and two veteran patent prosecutors and IP counselors. They will analyze:
• The pluses and minuses for patent owners and challengers of the USPTO’s new derivation proceeding versus U.S. district court litigation
• Litigation between employers and inventors, including a Federal Circuit decision illustrating the pitfalls of securing ownership of patent rights through an employment agreement, and another showing how failure to name all inventors may bar patentabilty.
• The potential disruption caused by failure to carefully monitor R&D collaborations between companies or between corporate and academic collaborators.
Manisha Desai, UCB Pharmaceuticals
Brian Hubbard, Condo Roccia
Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
Manisha Desai is Associate General Patent Counsel at UCB Biopharma SPRL, in Brussels. With 20 years of experience as an in-house patent attorney in the pharmaceutical industry, including many at Eli Lilly and Co., Manisha has worked on patent procurement and enforcement, including U.S. and international patent litigation. Manisha has represented IPO and other industry organizations on IP policy matters during multilateral negotiations at the World Intellectual Property Organization and other UN agencies. Manisha holds a Ph.D. in pharmacology and conducted neuroscience research before her legal career.
Brian Hubbard is a partner at Condo Roccia Koptiw. He advises and counsels clients on all aspects of IP, including the development and implementation of patent strategies across diverse technologies and the preparation, prosecution, and portfolio management of patents. He negotiates IP collaboration agreements that allocate and protect rights, and gives practical advice on managing relationships under such agreements. Prior to joining his firm, Brian worked in-house at DuPont for six years, where he was lead IP attorney for a major business.
McDonnell Boehnen Hulbert & Berghoff LLP
Kevin Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff and serves as chair of its Biotechnology & Pharmaceuticals Practice Group. His practice involves all aspects of patent prosecution, practice before the PTAB, and litigation. He represents pharmaceutical companies both large and small, as well as several universities in both patenting and licensing to outside investors. He has a Ph.D in molecular biology and was a Postdoctoral Fellow at the National Cancer Institute. Kevin is founding author of the popular Patent Docs blog.