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(Message started by: joseph_ulmer on Sep 27th, 2007, 8:18am)

Title: new IP while in possession of confidential info
Post by joseph_ulmer on Sep 27th, 2007, 8:18am
Hypothetical: inventor assigns rights to mechanical invention "A" to a partnership in return for a partnership interest. Partnership's purpose is to commercialize invention "A." Status of invention at time of assignment is patent pending.

Inventor is not: employee of partnership, under contract with partnership, or bound by written NDA or other written confidientility agreement. Inventor has not assigned rights to any "future" IP to the partership.

During the period of time prior to publication of Invention "A," the inventor (acting alone but obviously with intimate knowledge of invention "A") subsequently develops innovation "B" which can be used (1) as a component to improve invention "A" and (2) as a component in other machinery, not claimed in invention "A".

Invention "B" is NOT dependent on any claims in invention "A."

Question: Given the above facts only, does partnership have any rights or claim to invention "B"?

Title: Re: new IP while in possession of confidential inf
Post by patent_type on Sep 27th, 2007, 10:51am
Which side do I represent?

Title: Re: new IP while in possession of confidential inf
Post by joseph_ulmer on Sep 27th, 2007, 11:18am
You're the appellate judge!

Title: Re: new IP while in possession of confidential inf
Post by patent_type on Sep 27th, 2007, 5:36pm
Well, I'll put a complete SWAG here that cannot be taken in any way as legal advice.  Answer:  It depends.

1.  I don't know what jurisdiction we are talking about, and I don't know anything about the law in that jurisdiction anyway.  This is a business organization question, specifically what is the fiduciary duty owed by the partner to the partnership.  That law varies by state.  In light of that, there could be conflict of laws questions that arise depending on where the partnership is "located" and where the transaction assigning the invention to the partnership occurred, etc.  Then we could get into contract laws to actually interpret the provisions of the assignment contract.  These facts are not before this "appellate judge."

2.  Following number 1, the answer may be influenced by whether the partner is a general partner or a limited partner.  What does the partnership agreement say?  On the one hand, you say there is no contract and on the other hand you say the inventor is a partner in the partnership and has assigned the invention to the partnership (presumably by contract).  Is there a partnership agreement that can be implied from the relationship?  What does the assignment contract say about the partnership participation?  These facts are not before this "appellate judge."

As a general proposition of partnership law, a partner has a duty not to appropriate partnership opportunities and a duty not to compete.  Remember duty of obedience and duty of care owed to a partnership?  This seems to fall under duty of obedience considerations.  But do those duties extend to limited partners?  I think in some cases, but not others and maybe differently so in different jurisdictions.  I don't know.  Facts relating to these are not before this "appellate judge."

Because there are not enough facts of record, this hypothetical is remanded.

Not that I know anything about corporate/partnership law anyway--or anything about patent law, either.  But it appears this is out of the patent law arena.  

This looks more like a law prof floating a potential exam question on partnership law to see if anonymous fake internet lawyers can identify issues.  Hopefully other fake internet lawyers can identify some of the issues I missed so you have a better answer key.

Title: Re: new IP while in possession of confidential inf
Post by pentazole on Oct 2nd, 2007, 3:43pm
My opinion is, and just like patent_type it cannot be taken in any way as legal advice or legal opinion or legal anything, and just from a purely theoretical point of view, I don't see that there would be a conflict of interest.

Now firstly I'm construing what you say "partnership interest" as being not the same as "partner", which is what patent_type believed.

I feel that since B does not infringe on A in any way shape of form, B can be assigned to the partnership that got A if they choose to, can be licensed from the inventor, or can be licensed to other companies since it does not infringe on A. Even if B is licensed to someone else who would like to combine it with A, then the partnership that acquired A will benefit from a licensing agreement.

If the other company licensing B is going to use it on a product similar to A, and by doing so, will have a product that is superior to A, then I may see a problem there.

This is purely theoretical and bears absolutely no legal value.



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