Fed. Circuit: Consultant's Pre-Agreement Work Falls Outside Assignment Provision

On Feb. 5, 2016, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit issued a unanimous decision in TriReme Med., LLC. v. AngioScore, Inc., 2015-1504 (Fed. Cir. 2016), holding that AngioScore's consulting agreement had failed to assign inventive contributions made by a consultant before the effective date of the agreement. As a result, AngioScore failed to stop the consultant from licensing his patents on the inventions to a competitor, TriReme. While the panel remanded the case for further review of an alternative AngioScore argument, the decision highlights the need for attentive drafting of agreements with new employees and contractors, especially if they may have engaged in relevant inventive activity before the start of the employment or contractor relationship.