Patents are grants issued by the United States Patent and Trademark Office (USPTO) which confer upon the holder, the patentee, patent rights to such intellectual property as inventions, technologies, and processes. Patent rights include the right to exclude others from “making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” Once the USTPO has granted a patent, the inventor may market the product. Patentees who do not have the funds or time to market the product may profit by conveying the legal rights conferred by the patent to other individuals through written instruments. Several different types of licensing agreements exist, and each type divides the rights conveyed differently between the owner and licensee. Remedies typically sought in patent infringement are damages for loss of sales or royalties and injunctions to prevent further infringement. The process of patent-holding attorneys representing clients pursuant to their employment by law firms is rife with potential conflicts of interest. Because of the potential negative effects of the practice, law firms have a sound basis for their decision to terminate patent-holding attorneys when conflicts of interest arise. Because patents represent individual benefits to society through their ability to promote innovation, it is important to avoid precedent which prevents patent attorneys from obtaining their own patents. By developing procedures such as mandatory assignment of patents obtained by attorneys during the course of their employment, firms should be able to protect their reputations. Additionally, patent-holding attorneys can receive consideration from their employers for pursuing endeavors they are especially well-suited to do—obtaining patents to protect the innovations they create.
St. Mary's University School of Law
Ashley R. Presson,
Patent-Holding Patent Attorneys: Conflicts of Interests, Confidentiality, and Employment Issues Comment.,
St. Mary's L.J.
Available at: https://commons.stmarytx.edu/thestmaryslawjournal/vol40/iss4/4
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