Patenting Headache When Employee-Inventor Leaves

Patent applicants rarely worry about validity challenges based on applications filed later, but in some circumstances these can pose a significant obstacle under the doctrine of obviousness-type double patenting (OTDP). Designed to prevent applicants from improperly extending their exclusive rights, this doctrine prohibits applicants from obtaining claims not patentably distinct from the claims of an earlier-issued patent, even if such patent was filed later in time. To illustrate, the PTO may apply OTDP to reject a genus claim reciting “a machine for shaping metals” over a later-filed but earlier-issued species claim covering “a machine for shaping iron.”

The article addresses what happens when the genus application and species patent share a common inventor but lack common ownership, a scenario that could arise after an inventor changes employers.

Companies should monitor the movement of inventors in and out of their institutions. When inventors leave and are likely to begin work related to their former position, prosecute all their pending patent applications expeditiously, and promptly present and prosecute at the PTO any unfiled subject matter they invented. This may entitle the former employer to a favorable two-way obviousness analysis, potentially precluding an OTDP rejection. Additionally, use non-compete agreements, or agreements that require the departing inventor to assign ownership of future inventions falling within a particular scope of the inventor’s former employment. Retaining ownership of follow-on inventions preserves the right to file a terminal disclaimer, subject to the enforceability of the agreement.