In Shukh v. Seagate Technology, LLC, [2014-1406] (Fed. Cir. 2015), the Federal Circuit reversed summary judgment against Shukh claim to be named as a co-inventor for defendants, holding that Shukh’s reputational interest in being named an inventor gave him standing to challenge inventorship under 35 USC 256.<\/p>\n
Shukh’s first argument was that Filmtec Corp. v, Allied-Signal, Inc.<\/em>, should be reversed. \u00a0Under Filmtec<\/em>,\u00a0Dr. Shukh\u2019s assignment\u00a0in the Employment Agreement of his ownership While Filmtec<\/em> has inspired us all to use the language “agree to assign, and hereby do assign.” \u00a0Perhaps we should do more. \u00a0An express statement that rights in any inventions vest immediately upon creation with the employer might provide some rights to the employer. \u00a0The employer might also incorporate assignment language in its invention disclosure statement:<\/p>\n I agree that all rights in the inventions disclosed herein belonged to the EMPLOYER from the moment they were created, and agree to assign, and hereby do assign any rights I may have in them to EMPLOYER,and authorize EMPLOYER to file a patent application thereon. \u00a0I further grant the the\u00a0Chief Technology Officer of EMPLOYER a durable, irrevocable power of attorney to declarations, oaths, and other\u00a0patent application papers, including assignments to EMPLOYER, if I am unable or unwilling to do so.<\/p><\/blockquote>\n However, the Federal Circuit concluded that “concrete and particularized reputational <\/p>\n","protected":false},"excerpt":{"rendered":" In Shukh v. Seagate Technology, LLC, [2014-1406] (Fed. Cir. 2015), the Federal Circuit reversed summary judgment against Shukh claim to be named as a co-inventor for defendants, holding that Shukh’s reputational interest in being named an inventor gave him standing … Continue reading
\nand financial interests in his inventions conveyed legal in his inventions to Seagate, depriving him of standing to contest\u00a0inventorship of the patent. \u00a0The Federal Circuit\u00a0observed that \u00a0as a panel, it could not\u00a0overrule that holding\u00a0without en banc action — hardly a ringing endorsement of the immediate assignment doctrine of Filmtec.<\/p>\n
\ninjury can give rise to Article III standing” to challenge inventorship of a patent, noting that\u00a0\u201cbeing considered an inventor of important\u00a0subject matter is a mark of success in one\u2019s field, comparable\u00a0to being an author of an important scientific paper.\u201d<\/p>\n