Internal Procedures And Third Party Agreements Under The AIA

The passage of the America Invents Act, and with it the advent of “first-to-file,” has introduced a new wrinkle into company relationships with independent contractors, suppliers, customers and joint venture partners. Under first-to-invent, in most business relationships there was no need for a company to obtain an agreement that its partners would not file a patent application in areas related to the work of the company. If partners learned of patentable technology during the relationship, they would have a difficult time establishing that they were the first to invent that technology, even if they filed first. With the change to first-to-file, the risk that a business partner will claim the company’s invention as its own has risen dramatically. In an article in Today’s General Counsel, attorneys Leigh C. Taggart and Heidi M. Berven from Honigman Miller Schwartz and Cohn LLP consider a possible remedy if that should happen – and more important, how it can it prevented.