Patenting Headache When Employee-Inventor Leaves

Finnegan partners Paul W. Browning, Ph.D. and Jennifer H. Roscetti, and attorney Christopher L. McDavid coauthored this article on potential concerns for employers regarding obviousness-type double patenting (OTDP) when employed inventors change institutions. The article centers on In re Hubbell, a recent Federal Circuit decision in which the court applied the doctrine of OTDP to bar a former employer/assignee’s genus claims over an ex-employee’s later-filed, but earlier issued, species claims, where the ex-employee was a common inventor. In the article, the authors detail the events giving rise to the dispute, the court’s decision and reasoning, and the resulting practical implications.