Another University Patent Ownership Dispute: Stanford Loses Rights Based on Researcher’s Side Agreement

Stanford v. Roche (Fed. Cir. 2009) 08-1509r.pdf

Using federal NIH funding, Stanford scientists developed and patented a method of using PCR to measure HIV virus concentration in blood plasma. The development was done in partnership with the PCR leader Cetus. The Cetus PCR business was later purchased by Roche, and Stanford subsequently offered to license the patent rights to Roche (for a substantial royalty). After negotiations stalled, Stanford sued Roche for patent infringement. Roche claims that it has ownership rights or – at least – shop rights to the patents based on its acquisition of Cetus’s PCR assets. The district court (Judge Patel, N.D. Cal.) rejected Roche’s claim of rights, but did find the patents invalid as obvious (on summary judgment).

Roche’s Ownership: Roche raised ownership rights both as a counterclaim and as a defense. The district court held those claims barred by California’s statute of limitations. On appeal, however, the Federal Circuit held that the general statute of limitations does not operate to block defenses in litigation. Rather, “[u]nder California law, a defense may be raised at any time, even if the matter alleged would be barred by a statute of limitations if asserted as the basis for affirmative relief.” (Quoting Styne v. Stevens, 26 Cal. 4th 42, 51 (2001)). Likewise, the statute of limitations to claiming rights does not apply when ownership is raised as a challenge to a plaintiff’s standing to sue. “It is well settled that questions of standing can be raised at any time and are not foreclosed by, or subject to, statutes of limitation.”

The law of patent ownership is somewhat complex because it involves a mixture of state law (or the law of the local jurisdiction) and federal law. State contract law serves as the baseline, but federal law (esp. Federal Circuit law) creeps into many situations. Here, for instance, the Federal Circuit has held that the “question of whether contractual language effects a present assignment of patent rights, or an agreement to assign rights in the future, is resolved by Federal Circuit law.”

One of the listed inventors first signed an agreement with Stanford – promising to assign any future inventions that emerged from his employment. Later, the inventor signed an agreement with Cetus agreeing “to hereby assign” his interests. Under Federal Circuit law, these two contracts are treated differently. And, although the Cetus agreement came later, the company could claim equitable title immediately at the moment of invention while Stanford needed to actually obtain an assignment. The company also automatically held legal title in the patent application at the moment it was filed. (The inventor did not sign an assignment to Stanford until after filing).

“[B]ecause Cetus’s legal title vested first, Holodniy no longer retained his rights, negating his subsequent assignment to Stanford during patent prosecution.”

Recordation of Rights: Patent ownership regularly transfers without the new owner recording the assignment with the USPTO. Recordation is not required, but it does offer some benefits. Notably, where two entities both claim ownership (as there are in this case), a second assignee can hold title if it records first.

A [prior] assignment . . . shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage. 35 U.S.C. 261

One caveat in the statute is that the subsequent assignee must be a bona fide purchaser – i.e., take “without notice” and pay “valuable consideration.” Here, the Federal Circuit found that Stanford was at least on inquiry notice of the relationship between the inventor and Cetus and the potential for a rights-transfer.

Standing:

Stanford cannot establish ownership of Holodniy’s interest and lacks standing to assert its claims of infringement against Roche. Thus, the district court lacked jurisdiction over Stanford’s infringement claim and should not have addressed the validity of the patents. The district court’s grant of summary judgment of invalidity is therefore vacated, and the case is remanded with instructions to dismiss Stanford’s claim for lack of standing.

Notes:
  • Stanford would have won the case (at least the ownership issue) if it had written its employee agreement to automatically transfer rights upon creation of the invention. Best practices in patent law dictate that patent ownership (and right to sue) be always maintained in a single entity.
  • In Gerber Scientific Int’l v. Satisloh AG, No. 3:07-CV-1382, (D. Conn., September 25, 2009, order) (P. Dorsey), the court held that the assignment of patent rights in the original case did not include later-filed continuations-in-part (CIPs). “Although courts have found variously worded assignments to include CIPs, Defendants are correct that there is no binding precedent holding that an assignment with the exact terms cited above includes CIPs.” The Court has certified that issue for interlocutory appeal to the Federal Circuit who will likely hear the case. [Zura]

41 thoughts on “Another University Patent Ownership Dispute: Stanford Loses Rights Based on Researcher’s Side Agreement

  1. Interesting problems occur when Federal Employees are involved. link to ipmall.info

    The problem I see is that an inventor may have multiple, conflicting obligations to assign the same invention. I think, under these circumstances, the recording statute should prevail, which means the result in this case was wrong.

  2. “Can you point to a single authority (statutory or common law) other than the text of the Bayh-Dole Act that suggests that the origin of title in a United States patent may vest in something other than a natural person (namely, an inventor)?”

    Michael,

    I can’t point you to such an authority outside of the text (and the apparent integrated scheme) of Bayh-Dole. The reason Bayh-Dole applies in the first place is because the research leading to the invention in the Stanford University case was at least partially (if not wholly) federally funded. With such federal funding, strings may come attached (see one of my posts above) which may include vesting title (by operation of law) in the contractor, whether or not the contractor has a formal assignment with the researcher. The obligations imposed by Bayh-Dole on the contractor regarding “subject inventions” will work (and make sense) only if the contractor is initially vested with title to those “subject inventions.”

    Just remember also that, before Bayh-Dole, the feds often owned the rights to inventions from federally funded research. I’m not aware of any case that challenged the feds ability to do that either.

    I also have this nagging problem with allowing the incidental assignment clause in Cetus’ VCA to trump the assignment clause in Stanford’s CPA. Judge Linn’s view that the incidental assignment clause in Cetus’ VCA effects a present transfer of future invnetion rights (versus the assignment clause in Stanford’s CPA) is pretty hypertechnical. As I also expressed in a post above, I doubt the Stanford researcher read the incidental assignment clause in Cetus’ VCA and particularly understood what it meant. If fact, I wonder if Cetus even understand this incidental assignment to mean what Judge Linn said it meant. Again, if the integrated statutory scheme expressed in Bayh-Dole is to work, allowing incidental assignment clauses like the one in Cetus’ VCA frustrate that scheme is going to create unnecessary trouble.

    The Stanford University case is also hard to reconcile with Central Admixture which basically said only the feds, not 3rd parties, can challenge the contractor’s title to “subject inventions” arising under Bayh-Dole. But that is exactly what Judge Linn’s opinion allows Roche to do. (In footnote 1, Judge Linn does suggest that Stanford may have some recourse to recover these rights under Bayh-Dole if the execution of the Cetus VCA violated Bayh-Dole, citing Central Admixture, so this may not be the end of the story here.)

  3. Ned,

    I think Congress could do anything it wanted to do constitutionally, regardless of the existing wording – of course, it would have to follow the prescribed process for doing so (Constitutional Amendment).

    Do you think Congress is capable of such an action given the difficulty in passing a much lower hurdle in non-constitutional patent reform?

  4. Michael, could Congress constitutionally place original ownership someone other than the inventor given the wording of constitutional grant?

  5. EG,

    Can you point to a single authority (statutory or common law) other than the text of the Bayh-Dole Act that suggests that the origin of title in a United States patent may vest in something other than a natural person (namely, an inventor)?

    Just curious. In other countries, patents can and do vest in corporations. I just didn’t think we did things that way in the U.S.

  6. It also makes the prohibition in 35 USC 202(c)(7) too easy to avoid by allowing a devious researcher/contractor.

    Deviousness to what end? If the federal agency wants the patent or doesn’t want the inventor to have it, the agency is simply going to void any devious transfer and put the contractor/researcher into irons if necessary. Why isn’t that enough?

  7. Just Visiting,

    I understand your point. But I see no “constitutional issue” with the contractor getting initial title under Bayh-Dole (essentialy by operation of law) where the invention comes from federally funded research. Federally funding often comes with “strings attached” and federally funded research is just one example. Put it this way, the researcher can keep the title if they don’t work for the contractor and the contractor doesn’t accept federal funding.

    The trouble with the logic that title resides initally with the inventor/researcher is that it allows title to the invention to too easily be transferred by the inventor/researcher to a third party, as happened here. Again, that’s contrary to the intent of Bayh-Dole generally that title should remain with the contractor unless they choose not to retain it or fail to comply with Bayh-Dole such that the feds can revoke it. It also makes the prohibition in 35 USC 202(c)(7) too easy to avoid by allowing a devious researcher/contractor to transfer title to a a 3rd party without the contractor’s knowledge.

    My point is that title to the invention has to initially reside somewhere, and the statutory scheme of Bayh-Dole makes more sense if it resides initially with the contractor. May be we’ll just have to “agree to disagree” on this one. No harm in that, it’s been a good debate.

  8. EG,

    I’m simply suggesting that you are working too much to make the word retain to mean “has original titlewithout assignment from the inventor.” It’s simply not necessary, and not doing so avoids any constitutional issues.

    I’m secondarily suggesting that validating the statute’s intent does not require doing anything other than making sure the government gets title and perhaps ensuring that that the inventor not end up with title if that is what the government wants. The issue of who owns the invention if the government doesn’t care is rightly left up to the parties.

    IMO, the contractural issues are completely separate, and once the government doesn’t care, they should decide who gets title.

  9. “In my opinion “government has title” is shorthand for employee/contract must yield title and attempts to do otherwise will be voided and possibly result in criminal penalties.”

    Just Visiting,

    Not sure I understand what you’re saying here. I’m not being critical, just want to make sure I understand your comment about “march-in-rights.”

  10. “Also, why would the US need the “march-in-rights” provision of Bayh-Dole if the US had title to begin with?”

    Why, indeed?

    In my opinion “government has title” is shorthand for employee/contract must yield title and attempts to do otherwise will be voided and possibly result in criminal penalties. I don’t see any problem with there being some due process involved before the government scoops up the rights.

  11. Just Visiting,

    A good question with regard to 35 USC 202(d). My take on this is that this provision of Bayh-Dole leaves it to the contractor (e.g., university) to arrange what rights the inventor retains and how that is to be accomplished. What this section really addresses is ensuring that if the inventor does retain the rights, they’ll be subject to the same Bayh-Dole obligations as the contractor was previously subject to. That’s clear from the Central Admixture case.

    Two courts prior Central Admixture did read Bayh-Dole as putting title initially in the U.S. But after reading the various proviisons of Bayh-Dole carefully, “retain title” makes no sense uncless the contractor (i.e., the party to the federal funding contract) has the title. Also, reading Bayh-Dole as putting initial title in anyone other than the contractor is contrary to what Bayh-Dole was intended to do.

    Bayh-Dole is an integrated statutory scheme which changed what was the prior primary paradigm, namely that the US had title in federally sponsored research. Instead, under Bayh-Dole, the contractor has title unless it is revoked by specific request of the fedeal agency under circumstances specified by Bayh-Dole. That’s clear from the initial “disposition of rights” paragraph 35 USC 202(a) (which talks about each nonprofit organization or small busines, within a reasonable time after disclosure, being able to elect to retain title to any subject invention) and is repeated throughout the Bayh-Dole statute.

    In fact, if the federal agency fails to request that title be revoked within a certain period of time (for example, within 60 days of the failutre to disclose the “subject invention” to the agency), the “voidable” title in the contractor is basically unchallengeable. Central Admixture makes that clear too. Put it this way, if title isn’t in the contractor intially under Bayh-Dole, then why doesn’t the Bayh-Dole statute refer to “obtaining” or “transferring” title instead of “retaining” title? Also, why would the US need the “march-in-rights” provision of Bayh-Dole if the US had title to begin with?

    In my opinion, the Stanford University case frustrates and potentially undermines the integrated statutory scheme of Bayh-Dole as it relates to “subject inventions.” By definition, “subject inventions” will almost certainly be future inventions at the time the funding agreement is signed. And admittedly Stanford University could have phrased its agreement with the researcher to avoid the problem of a “promise to assign rights” versus an “immediate assignment of rights.” But why let the “technical” phrasing of the assignment clause between the contractor and the researcher so easily frustrate the integrated statutory scheme of Bayh-Dole?

    That the assignment clause in Cetus’ VCA (Visiting Confidentiality Agreement) trumped here is particularly bizarre. I’ve been in corporate patent practice, and have seen agreements similar to the Cetus VCA. The signficance the Federal Circuit puts on this assignment clause in Cetus’ VCA suggests a lack of understanding of “real world” confidentiality agreement practice. This assignment clause was incidental to the pimary purupose of the Cetus VCA which was confidentiality. I would be surprised if the Stanford researcher read the VCA, especially the assignment clause, and even more shocked if that researcher understood what that assignment clause meant.

    Again, my view on how title works in Bayh-Dole situations is based on careful study of the statute as an integrated whole. The Federal Circuit’s opinion in the Stanford University case simply ignores how that statutory scheme works, and especially the consequences of allowing, of all things, an incidental assignment clause in a confidentiality agreement to so easily undermine that statutory scheme.

  12. “a motivated reader”

    Is this a politically correct way of saying that EG is reading what he wants the material to say and ignoring the very basic first steps?

  13. EG,

    I think you are a motivated reader.

    What would those rights be that the inventor can get retention of if the university has title? Why didn’t the statute speak of a request to transfer rather than a requrest for retention?

    Isn’t the statute a lot simpler to read if retention and retain have nothing to do with who originally has the rights. Further, given the courts holding that the government can step in and void transactions and scoop up the title, isn’t the governments position in all of this maintained without disturbing the inventor owns the rights paradigm.

    Or viewed another way, why does justice require interpreting the statute to bail out the contract/inventor goof ups if the government does not want the invention?

  14. “…an employment agreement can not be recorded at the PTO because it cannot contain the patent number (by definition, it was signed before the invention existed)”.

    I have a solution for you, Matt.

    At the job interview you have the prospective employee draw a picture of an everyday object, perhaps ostensibly as a psychological test. Then, when they start work, less than six months later, you file their picture as a design patent application, and have them sign an assignment of the design application that just happens to include an employment agreement in the same document, and then you record it.

    I have to go now, I must file my business method application on this, LOL!

  15. Just Visiting,

    Interesting point. 35 USC 202(d) phrases it as “the Federal agency may consider and after consultation with the contractor [e.g., university] grant requests for retention of rights by the inventor.” In other words, for the inventor to “retain the rights”, there must be a “request” with the contractor “being consulted with.” Notice also there’s no mention of “retaining title” to the invention in this instance but only “retention of rights.” That still suggests to me that the initial title to the “subject invention” under Bayh-Dole resides in the contractor (e.g., university) where the federally sponsored research is carried out.

  16. I can conceive of no law that can transfer an inventor’s initial ownership rights to anyone without his consent, expressed by signing a contract, or implicit, for example, by being an employee and where the invention is made in the ordinary course of business. Since there is no work for hire doctrine in the US regarding patents, the only recourse left is the expressed contract.

    Again, what concerns me the most its the issue that Federal Law controls whether a contract assigns a present right in a future invention or whether it only obligates an assignment post invention. I think this is clearly a matter of state law and I think it should be a matter subject to a statute of limitations. For example, a state law could validly state, IMHO, that a present assignment is void unless a claim of ownership is made within a specified time dating from the issue of a patent.

    We have had two many recent examples of gross injustices practiced by the FC on inventors who have for years, decades even, invested in patents and businesses founded on patents only to have the ownership issue raised by even third parties via standing.

    In this case, Stanford got reamed, but so did the inventors as Standford shares royalties with the inventors.

    I would hope that California, at a minimum, would consider simply banning contracts of present assignment of future inventions.

  17. EG,

    Using your definition of “retain”, what would “permit the inventor’s to retain title” mean if the university actually has title?

  18. Breadcrumbs,

    Actually, as even this case shows with regard to the assignment clause for the Cetus VCA, an invnetor may agree to assign away rights to inventions even before they come into being. This was true even before Bayh-Dole.

  19. EG- For your theory to be correct, the actual inventors would have to be signatories to the contract with the funding agency, and that contract would have to operate as a present assignment of future rights. That is possible, I suppose, but I have never seen a grant contract that I thought reflected a present assignment. To the contrary, the standard language I quoted above strongly suggests that there is no present assignment, and it is the organization’s job to get that done.

  20. EG,

    While it may not make sense, isn’t there historical precedent (the way the law always read prior to Bayh-Dole) that an invention must START as being owned by the inventor and ONLY an inventor? In fact, even today in the US, corp’s and other entities cannot be listed as inventors, and title always starts with the inventor. This may mirror PLOSITA’s view.

  21. Everett,

    There’s no difference under Bayh-Dole between a governmetn “grant” or “contract.” Both types of arrangements are subject to Bayh-Dole.

    Just Visiting adn PLOSITA,

    Outside of Bayh-Dole, I would agree with you that title to the invention initially resides with the inventor(s). But the language of the Bayh-Dole Act, especially 35 USC 202(c), talks in terms of the organization electing to retain title, not the inventors. In fact, 35 USC 202(d) (which permits the inventor(s) to retain title if the organization elects not to and gets the fed agency’s approval) would make no sense unless title initially resides with the organization.

  22. I agree with Just Visiting. Initial title rests with the inventors, and nothing in Bayh-Dole contradicts that fundamental principle, ie, Bayh-Dole does not transfer title of invention from the inventors to anyone else by operation of law alone. It is the University’s obligation under Bayh-Dole to control its employees in accordance with the funding agreement at issue, ie, to force them to assign. If the University does not do that, the problem is between the University and the funding agency. Assuming the funding agreement here used the standard language in the regulations, Stanford arguably violated the following provision by allowing Holodniy to act as he did:

    (2) The contractor agrees to require, by written agreement, its
    employees, other than clerical and nontechnical employees, to disclose
    promptly in writing to personnel identified as responsible for the
    administration of patent matters and in a format suggested by the
    contractor each subject invention made under contract in order that the
    contractor can comply with the disclosure provisions of paragraph (c),
    above, and to execute all papers necessary to file patent applications
    on subject inventions and to establish the government’s rights in the
    subject inventions. This disclosure format should require, as a minimum,
    the information required by (c)(1), above. The contractor shall instruct
    such employees through employee agreements or other suitable educational
    programs on the importance of reporting inventions in sufficient time to
    permit the filing of patent applications prior to U.S. or foreign
    statutory bars.

  23. “Since the work was funded with government money, it should be the subject matter of Bayh-Dole laws and not a weird mix of contract/Bayh-Dole law”

    I disagree.

    I would conclude, although the FC declined to, that someone did violate the Bayh-Dole law. Perhaps that would result in a problem for Standford or Roche if the government really wanted the invention, but it turns out that the government ain’t interested. Further it is not clear that the remedy for the violation would be to give the invention to Standford.

  24. EG and Mike–thanks for the informative posts. Is there any difference under Bayh-Dole for research funded by a government grant versus work done under a government contract, as far as title? Maybe there was something about the funding itself that influenced the decision, even though it wasn’t discussed in the opinion.

  25. I tend to agree with EG regarding the opinion’s Bayh-Dole analysis. Since the work was funded with government money, it should be the subject matter of Bayh-Dole laws and not a weird mix of contract/Bayh-Dole law. The mechanism is clear:
    1. The contracting entity may elect to retain title to the invention.
    2. If it doesn’t elect to retain ownership, the government gets a bite at the apple.
    3. If the government doesn’t want it, title reverts to the inventor.

    The law is clear, and it differentiates between three different parties of interest. The inventor doesn’t get “title” until two other entities affirmatively refuse title.

    Furthermore, there is a clear prohibition on assignment of the invention. If it didn’t work this way, exactly HOW could the government exercise its march-in rights if the invention was assigned away to a third party?

    Lastly, everyone is on notice about the government rights in a patent. It’s one of the very first things in the specification. If that’s not notice to put a party attempting to acquire rights in it on notice of another party’s superceding interest, why should recording the patent (except, of course, that the patent law says so)?

    Poorly reasoned opinion making really, really bad law.

  26. Here is the article. My interpretation of the opinions set forth therein is that in the opinion of some Stanford researchers they should not have to pay license fees to use patents. link to law.com

  27. Does anyone think this has to do with that Stanford professor’s whining artcile about how unfair it is that they have to pay to use a database for HIV research? It came out in a magazine about four months ago. I think it was the California Lawyer Magazine. Could this be payback? The attitude of the professor was very arrogant.

  28. Note that if the research in question was not funded by the Federal Government, then Bayh-Dole would not apply since it refers only to inventions made with Federal funds.

  29. This is totally off topic; however, I saw an advertisement for working as a patent attorney for $40.00 per hour. I think that companies need to get a clue. Firstly, teaching guitar pays about $50.00 per hour, at a minimum. Secondly there is no God Given Right to have a patent drafted. Thirdly, one can make about $300.00 per hour working bankruptcy. I think that the clients are pricing themselves out of patent services.
    Let every prosecutor know that should the patent you draft ever be litigated, you will need to be prepared to spend at least 20 hours preparing for and being subject to a deposition, as well as the cost of your own attorney to represent you. In other words one patent you draft for, the ridiculously low price of $4,000 (IBM) price, can cost you upwards of $30,000.00 in time and expenses.

  30. With all due respect to Judge Linn, this opinion regarding Bayh-Dole is wrong to me on several counts.

    First, it misinterprets how “title to subject inventions” works under Bayh-Dole. Under Bayh-Dole, title to subject inventions (those resulting from federally sponsored research which this case appears to involve) belong initially to the organization (e.g., Stanford) which carries out the sponsored research. It’s only if the organization elects not to retain title that title may pass to the US, and only if the appropriate federal agency specifically requests that title pass to it. As Central Admixture held, title is “voidable” not void if the organization doesn’t choose to retain title and the appropriate federal agency fails to request title back.

    Second, it is inconsistent with 35 USC 202(d) which says that if the organization elects not to retain title, the organization may request that the appropriate federal agency allow the inventor to retain rights in the subject invention. Again, 35 USC 202(d) says that the organization has title in the subject invention until it elects not to retain title.

    Third, it is inconsistent with 35 USC 202(c)(7) which expressly prohibits a nonprofit organization, like Stanford, from assigning rights in federally sponsored research without approval of the respective federal agency. To allow the Stanford researcher (Holodnly) to defeat the prohibition of 35 USC 202(c)(7), especially by that researcher signing a VCA that incidentally assign rights to subject inventions to third parties, is bizarre.

    Fourth, it allows, in essence, a “third party” challenge (e.g., by Roche) to title to a subject invention which the Federal Circuit said in Central Admixture cannot be done. Instead, as Central Admixture held, only the appropriate federal agency may void such title.

    Fifth, Judge Linn’s opinion incorrectly characterizes what Stanford is arguing as “voiding” the assignment by Holodnly of the subject invention. That’s not the case at all. Instead, Holodnly had no title to give because, by operation of Bayh-Dole, title to the subject invention remained with Stanford until voided by the appropriate federal agency. In fact, the reliance by Judge Linn’s opinion on the Townsend case is totally misplaced because the Townsend court also got it wrong (in electing to retain title, the university is not “exercising its right to title” because it already has title by operation of Bayh-Dole).

  31. I think that the most interesting bit is the “another” university. Honestly, I am surprised that this has only started happening relatively recently. If anyone has had the oppertunity to explore any university’s tech transfer program’s structure, then one quickly realizes that it is, for lack of a better term, a real shit-show. It seems that even sophisticated programs like, e.g., Stanford, are not immune to this problem.

    If anyone is ever in a situation where a university is involved, I suggest that one start by looking into the university’s tech transfer program and its employment handbook relating to IP.

  32. A comment likely cannot cover the issue but

    1. The Stanford case holds that Stanford has no standing, an outcome related to the DDB case.
    2. As to — “Stanford would have won the case (at least the ownership issue) if it had written its employee agreement to automatically transfer rights upon creation of the invention.” — , would Stanford have won, or would Stanford merely have been a co-owner, in which case Stanford would not have won, anyway?
    3. In the earlier Lucent/Microsoft case, one had a Fraunhofer scientist who went to Lucent under a JDA; in the Stanford case, one had a Stanford scientist going to Cetus more as a visitor, and look at what happened.

  33. FUBAR.

    1) Stanford has no standing to sue (anyone).
    2) Both Roche and Stanford cannot sue each other to establish title. The SOL applies.

    The only thing left is private negotiation, but where does that leave Stanford if Roche assigns its rights? Roche has contended and proven the patents are invalid.

    Finally, I cannot agree that the issue of whether an obligation to assign is a present assignment or effective only when asked is a matter of Federal Law. This legal issue clearly is substantive.

  34. This issue is not as clear as “Stanford would have won the case (at least the ownership issue) if it had written its employee agreement to automatically transfer rights upon creation of the invention.”

    In Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568, the Fed. Cir. stated in dicta “Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign.”

    Notice the parentheses. There is no distinction in § 261 between expectant and actual interests. This would lead to absurd results because an employment agreement can not be recorded at the PTO because it cannot contain the patent number (by definition, it was signed before the invention existed).

  35. My head hurts after I read or research cases in which there is an ownership dispute. The mixture of CAFC and state law, combined with contract interpretation issues, leaves me in need of a Valium the size of a hockey puck.

  36. link to ipwatchdog.com

    “We need a live debate so you can be cornered.”

    Their discussion mirrors our own Noise. I also submit a request for a live debate. I’d rather put you down once and do it right than consider all the time I’ll spend putting you down over the next year in comments. We can do it sans names or psudonyms if you prefer. To be broadcast on youtube. If you don’t have a camcorder (I don’t) then I’ll get my bud to bring his. We can get a neutral party to judge the answers and maybe even have an audience if anyone wants to come.

  37. “Stanford would have won the case (at least the ownership issue) if it had written its employee agreement to automatically transfer rights upon creation of the invention.”

    It simply has to be repeated.

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