What is an invalidating assignment
So to sum it up, we have a certificate of registration in the name of Mowder filed when the estate owned the copyright.
Permanent General moved for a judgment on the pleadings on the theory that the trustee does not have a valid copyright registration, a prerequisite for the suit.
Thus, illustrates the wisdom in crafting and continuously executing an assignment strategy for patent assets, and how the right strategy will protect patent owners from being challenged with their own patents in IPR proceedings. 6,754,195 (the ’195 Patent), which lists two inventors: Mark A. Thus, because of the lack of executed assignments or employment agreements, the Webster patent seemed poised to invalidate the ’195 Patent.
In it, Kunkel, who was in bankruptcy, filed copyright applications in his own name rather than the name of the estate.Properly prepared patent assignments and IP assignment clauses in employment agreements can play a critical role in an IPR proceeding — for example, by preventing your own patent applications from becoming invalidating prior art under 35 U. That section makes clear that such prior art “shall not preclude patentability” when the prior art and the patent at issue were “at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” However, the patent owner in this case faced several significant evidentiary hurdles to disqualify that prior art, including a complicated corporate holdings structure, non-existent assignment records and conflicting evidence. The petitioner asserted that the Webster patent, combined with other prior art, rendered the challenged claims of the ’195 Patent obvious under 35 U. In view of this complexity, the Patent Trial and Appeal Board (PTAB) granted the patent owner’s request for additional discovery to show common ownership, including depositions of Webster and Seals, and a production of documents from the corporation. In response, the patent owner sought to disqualify that prior art patent under section 103(c). The Webster patent was filed less than a month before the ’195 Patent, making it prior art under section 102(e). This issue became even more complicated as the “person” at issue was a complex corporation with multiple subsidiaries that changed their names around the key dates at issue in the case.Use of an unregistered mark in an extensive manner can give a descriptive mark acquired distinctiveness and thus make it eligible for registration.Well-known unregistered marks and other prior used unregistered marks can serve as grounds to challenge the registration of a later filed trademark.