PEB 702 Engineering & Society

Semester 1 2020

Question bank 2. Case Analysis on Patent Ownership

Instruction: Answer the case Individually.

Submission Date: Wednesday 26 February 2020; COB

CASE Study: Patent Ownership.

You are an expert in food processing machinery. A patent attorney has retained
you (by verbal agreement) to serve as expert witness for her client, a
manufacturing company suing another such company for patent infringement.
Your assignment is a) to study the machines in question, b) to determine
whether, in your opinion, the patent has been infringed, and c) to testify
accordingly should you find an infringement. When studying the machine, you
get an idea you believe to be patentable. That is, you conceive of a machine
which, in your opinion, would constitute an advance in the design of the
particular food processing machinery involved in the pending lawsuit. You
submit the idea to the patent attorney and the manufacturer. You wait three
months. You hear nothing. So, you request the patent attorney and the
manufacturer to advise within a reasonable time whether they have any interest in
the improvement. They apparently take this request as an attempt to pressure
them into paying you more than originally agreed for your work in the lawsuit.
The patent attorney writes you demanding that you immediately sign over to the
manufacturer all the rights to your idea. She pointedly gives no assurance of
compensation for your idea beyond what you have already been paid for your
study and testimony. Indeed, she suggests that your conduct has been improper.
Has it? What should you do now?

END