Mike Turner, Intellectual Property partner, and Alexis Dominguez, Labor & Employment partner, recently published an article in Law360 exploring the Federal Circuit’s decision in Fortress Iron LP v. Digger Specialties Inc. and its implications for patent owners and practitioners.
In the article, Turner and Dominguez discuss how a patent infringement lawsuit that had been litigated for more than five years was ultimately derailed because key inventors were omitted from the asserted patents. The court’s decision reinforces a fundamental principle of patent law: a valid patent requires correct inventorship.
The authors explain why inventorship issues—while less frequently raised than other patent validity challenges—can have significant consequences when overlooked. They also outline practical steps companies and patent counsel can take to mitigate risk, including regularly reviewing inventorship determinations, securing inventor declarations and assignments promptly, and maintaining strong intellectual property ownership provisions in employment and contractor agreements.
The article serves as a valuable reminder that careful attention to inventorship can help protect patent rights and avoid costly disputes down the road.
