Failing to Identify an Invention in a Consulting Agreement Found Not to Assign Patent Rights

Author: Jeffrey D. Smyth
Editor: Aaron Gleaton Clay

In TriReme Medical, LLC v. Angioscore, Inc., No. 15-1504 (Fed. Cir. Feb. 5, 2016), the Federal Circuit reversed and remanded a district court’s dismissal of a suit for correction of inventorship based on a consulting agreement.

Angioscore claims exclusive ownership of patents related to angioplasty balloon catheters. TriReme, a competitor, sought to acquire an interest in the Angioscore patents from an Angioscore consultant involved in developing the claimed catheters but was not a named inventor. TriReme sought to have the consultant named as an inventor pursuant to 35 U.S.C. § 256. Angioscore moved to dismiss the case, arguing that the consultant assigned all of his rights to Angioscore. Relying on the underlying consulting agreement, the district court found that the consultant had assigned his rights to the patents by failing to identify the inventions as being incorporated into Angioscore’s technology, to which he were to retain the rights and grant Angioscore a non-exclusive license.

Interpreting the plain meaning of the consulting agreement, the Federal Circuit reversed and remanded. The court found that by failing to identify the inventions in the consulting agreement, the consultant did not assign any rights under the terms of the contract, and that at best, the consulting contract conferred a nonexclusive license to Angioscore. The court also found that whether a second provision in the contract regarding the timing the consultant’s services were performed, which implicated a second provision of the consulting agreement concerning assignment, involved factual questions requiring remand.

 

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