In IP Litigator, David McIntosh and Sam Ross Examine a Potential Cautionary Tale in Patent Assignments

In an IP Litigator article, IP transactions partner David McIntosh and IP transactions associate Sam Ross examined a potential cautionary tale in patent assignments.

In the case Causam Enterprises, Inc. v. International Trade Commission, the United States Court of Appeals for the Federal Circuit (CAFC) found that an invention assignment agreement that broadly assigned the “invention” of a patent application nonetheless did not transfer rights in a “continuation-in-part” of that patent application. This decision counsels companies active in the patent space to review their form employment or invention assignment agreements to ensure that they include a specific assignment of “continuations-in-part,” and to review existing patent assignment agreements to ensure appropriate language has been included.

The authors note the CAFC’s holding in this case has implications for both existing and future patent assignments and provide considerations for companies and individuals.