Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions

Thu, 19 Jun 2008 15:19:00-0500

In a recent decision, the Ninth Circuit held a district court's jury instructions regarding construction of the patent ownership provisions of an employment agreement erred in applying contract law rather than patent law.

The court determined that jury instructions defining the terms "conceive," "reduce to practice," and "Work of Dr. Yu" (a possible coinventor) required application of patent law to determine whether co-inventorship existed for both conception and reduction to practice of an invention, and whether conception and/or reduction to practice took place while using the employer's facilities. The Ninth Circuit held the district court erred in applying agency law to determine whether a second researcher's actions triggered the patent ownership provisions of the "employed" researcher. The court remanded the case and ordered a new trial with proper jury instructions.

More detail of Los Angeles Biomedical Res. Inst. v. White after the jump.

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Ninth Circuit: Patent law terms in employment agreement should be given patent law definitions