Saturday, January 16, 2021

Comments on Hamamatsu Patents Ownership Transfer to Sionyx

It appears that Federal Circuit decision to transfer an ownership of a number of Hamamatsu patents to SiOnyx has attracted quite a lot of attention from lawyers.

Troy & Schwartz comments: "These days, Non-Disclosure Agreement (NDA) templates are readily available on-line, often free-of-charge, making them an attractive alternative for many.  The problem with these templates is they are not necessarily applicable to the contracting parties’ unique circumstances and/or do not properly anticipate dealings between the parties. A poorly drafted, one-size-fits-all NDA can make or break a patent-infringement case many years into the future.

The outcome may well have been different had the NDA not “directed” the ownership of all future patents emanating from Sionyx’s confidential information to Sionyx.   Furthermore, any resulting patent relying on confidential information emanating from both parties should have designated both Cary and an Hamamtsu inventor as joint inventors no matter where the patent applications were filed.  Inventorship does not, however, mean that the inventor(s) is also the owner(s) of the patent.

As this case illustrates, an NDA can be a critical factor in determining patent (and other IP) ownership.  An NDA should be tailor-made for the particular situation at hand with particular emphasis on protecting the disclosing party which is often an individual inventor or a small start-up company."

Finnegan comments: "So, even though both parties ended up with co-inventors on the disputed US and foreign patents, SiOnyx ended up as the sole owner of all those patents.  The proofs established that confidential information relating to the patents came solely from SiOnyx.  Hence, the terms of the NDA led to SiOnyx being the sole owner of all disputed patents."

Oliff writes: "Hamamatsu argued on appeal that because the district court acknowledged that Hamamatsu's personnel were co-inventors of the patents, it should have at most granted SiOnyx co-ownership rights. The Federal Circuit stated that inventorship was irrelevant to the issue of ownership, and that the terms of the NDA stated that when patents arose from a party's confidential information, that party would fully own such patents."

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