The U.S. Court of Appeals for the Federal Circuit ruled earlier this month that a former General Electric engineer had no claims to a patent for technology he developed while working for GE. Upholding a ruling from the U.S. District Court for the Eastern District of California, Judge Lawrence J. O’Neill ruled that ex-GE employee Thomas Wilkins failed to prove that he was entitled to co-inventorship of a patent for wind turbines.
The facts in this case are complicated. Engineer Wilkins had worked as a wind turbine engineer for a GE-predecessor company, and then directly for GE, but was never named as a co-inventor on the patent in dispute. Wilkins later left GE and went to work for competitor Mitsubishi in an attempt to invalidate a group of GE patents for wind turbines. Mitsubishi later brought an anti-trust suit against GE over the patent and related patents.
While the case turned on evidentiary issues including the ‘rule of reason’ requirement, rather than the patentability of the invention itself, the case is an excellent cautionary tale for any company that hires high-tech employees and others who might develop intellectual property on behalf of a company.
The GE case raises all sorts of issues related to employee record keeping, work flow and exchange of information between and among employees at corporate locations in several countries, and an ex-employee’s right to profits from the sales of a patented product or license.
Practically speaking, any company that develops proprietary information should consult with an experienced business attorney who has a background in patents, trademarks, trade secrets, and copyrights to develop policies and agreements for all employees and contractors to sign with regard to company ownership of intellectual property rights.
If your Atlanta business needs assistance with intellectual property issues, including developing and streamlining policies and procedures related to intellectual property, or dealing with a former employee who has joined a competitor, you need a smart, experienced business litigation attorney to represent your interests. James J. “Jim” Thomas II has more than 35 years of courtroom experience handling complex business litigation as well as analysis, evaluation, and resolution of existing and potential litigation in business law and intellectual property cases. Visit www.litigationatlanta.com online, or give Jim a call at 404-869-5248 to set up a free consultation.