In order to prepare and prosecute utility, design, and plant patent matters in front of the United States Patent and Trademark Office (“USPTO” or “Office”), the USPTO requires practitioners to demonstrate possession of the legal, scientific, and technical qualifications necessary to render valuable service to clients. See 37 CFR 11.7(a)(2)(ii).
The situation is familiar: an employee leaves one company to go work for another, or perhaps to found her own start-up. She may be working on the same problems that she faced at her former workplace, and in the same technological space.
The employee’s work at her new company results in the issuance of a patent, and the new company takes the lead in the marketplace. Based on the work done by the employee at the former employer, however, the former employer may believe that it has ownership rights in the new patent.
What rights might the former employer have? A recent Federal Circuit decision, Bio-Rad v ITC – CAFC, sheds some light on how courts may resolve this kind of dispute—and how thorny the issues may be. Key takeaways are summarized below.