The Arizona Court of Appeals has ruled that a former employee who claims that her former employee stole and patented her idea may not seek relief in state court.
In November, 2008, Lisa Frank contacted Suzanne Brown and asked her to return as an employee to Lisa Frank, Inc., where Brown had worked ten years earlier. Brown started work in February, 2009 and in May she told Frank about her idea for a “children-safe oven.”
After collaboration with Frank and other company employees, Brown made a sketch of the oven and outlined its features. The company sent this material to its patent attorney, who prepared a patent application and forwarded it to Brown. However, the application failed to identify the inventor.
Several months later, the company fired Brown. Brown sued Frank and her company in Arizona state court, claiming that they had “wrongfully seiz[ed] possession and control of the Invention [and] Patent… related to the oven.” The complaint alleged conversion on the basis that the patent application “deprived [Brown] of her common-law rights in the invention. The complaint also asserted that Frank and her company “ha[d] been unjustly enriched” through the theft of the invention.
The trial court dismissed the complaint, saying that “to grant [Brown] any of the remedies that she seeks [as to the oven-related claims] would necessarily entail a determination… that [Brown] was the inventor,” an issue reserved to the federal courts and the U.S. Patent and Trademark Office.
The Arizona Court of Appeals agreed. Recognizing that “federal patent law does not preempt the entire field of law regarding inventions and inventors,” it nonetheless held that the issue of the identity of an inventor was reserved to the federal courts:
The federal circuit court of appeals… addressed the specific issue of federal and state jurisdiction over claims concerning the true inventor of an invention disclosed in a pending patent application in HIF Bio, Inc. v. Yung Shin Pharmaceuticals Industrial Co. … In rejecting the district court’s finding that “rights of inventorship and ownership of inventions . . . are valid state law claims,” the circuit court referenced its earlier decision in which it had held, “the field of federal patent law preempts any state law that purports to define rights based on inventorship.‟
The decision was issued in a memorandum not for publication.
The case is Brown vs. Frank 2 CA-CV 2011-0039.