The full text of this Article may be found here.
28 Fordham Intell. Prop. Media & Ent. L.J. 477
Article by Mark J. Abate* and Christopher J. Morten**
his Article provides an overview of the Federal Circuit’s all substantial rights doctrine. Surveying decades of case law, this Article seeks to clarify this confusing area of the law and set out the essential rules for those engaged in patent licensing, patent assignment, and patent litigation. This Article begins by explaining why effective ownership of a patent is critical to standing, and then describes the framework through which courts determine whether a party is, in fact, in possession of all substantial rights and is therefore the effective owner. While there are many factors that courts may consider, certain rights take priority in this analysis, the right to enforce being the most important. This Article concludes by providing guidance on how to structure an agreement to ensure that these rights are allocated predictably and reliably to convey effective ownership of the patent.
*Mark Abate, a Partner at Goodwin Procter LLP, concentrates his practice on trials and appeals of patent infringement cases, and has particular expertise in matters involving electronics, computers, software, financial systems, and electrical, mechanical, and medical devices. He has tried cases to successful conclusions in U.S. district courts and the U.S. International Trade Commission and has argued appeals before the U.S. Court of Appeals for the Federal Circuit. He is the former President of both the New York Intellectual Property Law Association and the New Jersey Intellectual Property Law Association, and is a board member of the Federal Circuit Historical Society.
**Christopher Morten is an Associate at Goodwin and Procter and a member of the firm’s Intellectual Property Litigation Practice. He focuses on patent matters, with an emphasis on chemistry and the life sciences. He has experience in district court litigation, including Hatch-Waxman litigation, as well as trials at the Patent Trial and Appeal Board, patent prosecution, and patent strategy and counseling.