Patent Ownership Split in Divorce and Divided Ownership Negates Standing to Sue

By Dennis Crouch

James Taylor v. Taylor Made Plastics (M.D. Fla. 2013)  Download 2013 WL 1798964

James Taylor is the named inventor of several patents covering plastic used in storm drainage system. See U.S. Patent No. 5,224,514. During his 2006 divorce, the Taylor agreed to equitable distribution of the marital assets including the patents in question here. The agreement also noted that proceeds from the patents would be divided 60/40 in favor of Mrs. Taylor. However, the settlement did not specifically state whether legal title was also divided between the two. The issue of divided legal title is important because of the general rule in patent law that a patent owner cannot bring an infringement allegation without joining all co-owners as co-plaintiffs. And here, Mrs. Taylor refused to participate (presumably because she is part of Taylor Made Plastics).

Following Florida marriage dissolution law, the district court here sided with the defendant and held that Mr. Taylor lacks standing to bring suit.

[S]ince the Patent was issued to the Plaintiff while he was married to Ms. Taylor, the Patent was presumably a marital asset…. The Divorce Settlement merely reinforced that presumption by subjecting the Patent to equitable distribution and awarding Ms. Taylor a 60% interest in any proceeds from the Patent. . . . Since Ms. Taylor has legal title to the Patent under Florida law, and has not been made a party to the action at hand, the Plaintiff lacks standing to sue for infringement.

As a portion of its decision, the court also found that issue preclusion applies in this case to prevent the court from re-examining the question of patent ownership.

112 thoughts on “Patent Ownership Split in Divorce and Divided Ownership Negates Standing to Sue

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  2. I think the key part of your Spin there was “like you.”

    Since none of what else you say actually fits me – there is a grain of truth in you typical l1es here.

    Besides which, YOU are the king of hypocrites.

    No one has ever come close to you in that regard.

  3. Trollboy: the inanity that IANAE brings

    IANAE disagree on stuff all the time. But he’s not a hypocritical dooshbag blogtroll like you, Trollboy, who relentlessly flails away at strawmen and then digs down to China whenever your trollery is exposed.

    you charge at the red cape of “anon says.”

    Dream on, Trollboy.

  4. Other people got it

    LOL – the other people of the little circle club.

    Isn’t that just special. Form your little circle and clean up when you all are done.

  5. Nope – see below – those who have seen your own version of the Malcolm Spin recognize that you do not treat things as they are.

    Here, it is your view of “absurd” which is called into question.

    The world according to IANAE might be a nice place to visit, but like c0mmunism, does not work well with reality.

  6. Nope.

    Yup. That’s exactly what I was pointing out.

    Other people got it. You might have spent a bit more time reading it, before you launched into your irrelevant existentialist ramblings.

  7. when neither way is clearly legally right or wrong

    Pay attention to the inanity that IANAE brings to the discussion before you charge at the red cape of “anon says.”

  8. Trusts vary by state law Ned.

    I doubt that the divorce lawyer controls the shared title.

    This still comes down to a state by state communal property law consideration.

  9. What I am saying is that the cumunal property aspect trumps the employment aspect.

    How each state treats that cumunal property aspect MUST be taken into account.

    And this is on the front end. Regardless of divorce, valuation, or further assignment.

  10. They were ASSuming that the law cannot lead to what they consider ‘absurd’ results.

    HUMPTY HAS SPOKEN!!!!! BOW DOWN!!!!!!

  11. They were ASSuming that the law cannot lead to what they consider ‘absurd’ results.

    There is a world of difference – especially considering the sources.

  12. They were pointing out that judicial conclusions that lead to absurd results are disfavored.

    Nope.

  13. anon, I actually was thinking of a trust. Trusts seem largely the same because of the Federal Tax Code.

    The divorce lawyer should have maintained title in the husband.

    In California, communal property is a form of joint ownership such that either party can encumber it.
    See, link to leginfo.ca.gov

    Note the point about “business” that one spouse can manage without the consent of the other. I think this permits the named inventor to license and sue to the exclusion of his spouse. IIRC, my client was sued once by an married individual not joined by his wife. We did not raise standing, but when we settled, we got her signature.

  14. Trollboy: Your spin was “Whatever”

    That wasn’t “spin”, Trollboy. That was an accurate description of your response to IANAE and LB. They were pointing out that judicial conclusions that lead to absurd results are disfavored. Your “counterpoint” (being generous here) was the banal observation that “most everything” in the “real world” is “absurd”. In other words: “so what”. In other words: “whatever.”

    That’s not “spin,” anon. That’s a very fair summary of the conversation. I’m sorry if that hurts your feefees.

    I’m also happy to explain why your comment was deeply hypocritical, if you’d like. That’s another word you have great difficulty understanding, as we all know.

  15. It is a known fact that both you and Leopold have this odd vision condition when you see “anon said” that makes your brains turn to an oozing putty.

    You should get that checked out.

  16. Under which State Law does the communal property create the hypothetical you are setting up Ned?

  17. Alan, the Supreme Court Roche raised the issue of whether an obligation to assign a future interest could be considered a legal title in the future interest without perfection. Historically, citing authority, such a obligation only created an equitable obligation that had to be perfected to obtain legal title.

    Given the Supreme Court interest in the topic, I think the Federal Circuit position is subject to question and cannot be considered established law.

  18. Trollboy: feel free to actually read all my posts

    I read your posts, Trollboy, including the one where you accused LB of “shutting down his brain.” In fact, LB correctly noted that you were wrong and that your response to his comment was a pathetic attempt to change the subject.

    Seriously, Trollboy: read the thread yourself. It’s right up there for everyone to see. Are you really that s—pid?

  19. Your spin, as usual, misrepresents what I have said.

    There was no “spin”, Humpty. Nice try, though.

  20. Your spin, as usual, misrepresents what I have said.

    You are such a tool Malcolm.

    Don’t you have threads upon threads that await real answers from you?

  21. Another vacuous comment from Malcolm.

    Attaboy.

    But feel free to actually read all my posts here and attempt to deliver a fraction of the substantive merit.

    LOL – like that would ever happen.

  22. metoo: as I said it has been a long time since property and tort class, but it seems to me that they were married and if they jointly own property and need both to get value out of the property, then there may be a cause of action.

    Those sections you quoted are no different than saying that one may give away property.

  23. What possible claim would the husband have? Absent some contractual obligation, joint owners can do anything they want with the patent–including granting licenses or even dedicating the patent to the public. See 35 USC 253 and 37 CFR 1.321(a)

  24. See Enovsys LLC v. Nextel Communication Inc. et al., 614 F.3d 1333 (Fed. Cir. 2010) for a bit more on the issue. Also, this article on the subject:
    link to ipwatchdog.com
    discusses the issue in detail, including the fact that in most states one spouse can alienate personal community property.

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  26. Trollboy: Leopold – this thing you have with your brain shutting down

    Except that’s not what happened, Trollboy. Not at all.

  27. You haven’t been paying attention to the real world much, have you IANAE? Most everything out there is ‘absurd.’

    Translation: “Whatever.”

    What a f—-cking hypocrite.

  28. “The issue of divided legal title is important because of the general rule in patent law that a patent owner cannot bring an infringement allegation without joining all co-owners as co-plaintiffs.”

    The question is could the husband sue the wife if she refuses to bring an infringement action, which would render the patent worthless except for sale, or I suppose a bluff license.

  29. No, IANAE’s analysis is correct. There is no duty to royalty share; either owner may license. However, in this case, the husband has a 40% royalty. However, she probably licensed to the company for 100 dollars or something, and is instead some non royalty, “non-transfer related” payment.

  30. Did you somehow miss the Stanford v Roche item I have presented several times?

    Leopold – this thing you have with your brain shutting down when you see “anon said” – you should look into it.

  31. Good question what exactly the cause of action would be. But, I think there is the principle in common law that for jointly owned property that you have to cooperate if you partially own property to get value out of the property. Been a long time…

    I don’t think you can just let property go fallow.

  32. If the patent is worth something and she is not helping get its full value, then there is a lawsuit there.

    What would the cause of action be?

    Probably safe to assume that the settlement agreement doesn’t specify any obligation to help realize the full value of the patents.

  33. Actually, it would be cool order for specific performance that made her join the infringement suit. Maybe a first.

  34. I don’t know IANAE. I suspect that he could sue her for more than that. If the patent is worth something and she is not helping get its full value, then there is a lawsuit there.

  35. I suspect Ned is right, there is an underlying breach of contract issue here that either should have been raised, or could not have been raised for some reason not evident in the limited data we have.

    I infer that the ex-wife purports to personally co-own the patent, and it’s her corporation that is practicing the invention. I therefore suspect that, being the crafty and spiteful person she appears to be, she would have licensed her company for nominal consideration.

    He’s not entitled to a share of all of the company’s profits, because (1) they’re not due as royalties, and (2) the company is not infringing. The most he could sue for under the contract would be a few grinds of pepper.

  36. When I said the transfer was probably not defective, I mean it was probably intended that legal title would be shared, ie both parties required to sue. That’s pure speculation without looking at the documents, of course.

    That’s not a good way to remain agile in defending the patent rights, but it’s not an uncommon position for parties to end up in, especially where there are persons rather than corporations and holding companies involved.

    I suspect Ned is right, there is an underlying breach of contract issue here that either should have been raised, or could not have been raised for some reason not evident in the limited data we have. Or this is all just spiteful ex-spouse litigation, and the issues don’t even have to make sense.

  37. If an initial transfer is not defective, then she has no legal title, just a marital share in the benefit of a legal title retained by her husband. That is, if she has legal title as marital property at the outset, then he can’t sign away without her.

    Alternatively, the initial transfer by him is defective because he does not have full legal title.

    Alternatively, and agains the result here, he has full legal title, but she maintains an interest in the proceeds as marital property.

    I would hope that they would seek to reclassify this case in the future as the husband placing HIS legal title to the patents in the marital property as part of the settlement. That’s not exactly what they said though.

  38. Anon is saying that the title goes to both at conception. That to convey a patent application you need a signature. Ergo, there is a problem.

  39. The only issue then is whether or not ownership of a patent creates some special rights. I don’t think it does. There is of course the registry and rights of ownership at conception, etc. Not sure. Statute of Frauds? Have to look this up. Maybe something.

  40. The “critical factor” is that I challenged anyone “to show me one advanced state that has held that a patent assignment to an employer is invalid or incomplete because there was no consent.” You claimed that you had an example. It turns out you were wrong, and now you’re trying to change the subject. Gee, what a surprise. Now go way, trollboy.

  41. C’mon pay attention Leopold – the critical factor here is title by the spouse. Whether or not a subsequent assignment actually does exist is purely secondary to the critical issue.

    Pay attention indeed.

  42. But she would be plainly wrong, right?

    She might well be right. Your fact scenario highlights the difference between an inventor spouse and an inventor employee who happens to be married while he does his inventing away from the marital home.

    Spouses can even agree among themselves who is the owner of the patents resulting from at-home inventions, if they’re so inclined. If not, let them fight over it later, while they fight over the cash and the cars and the bling. It’s a private matter between them, and not likely to subvert the whole patent system no matter which way it ends.

    I’m more interested in what goes on outside the home. Most valuable patents are assigned to corporations. What advice to those corporations, when it’s impossible or impractical to get the spouse’s signature, or even ascertain the spouse’s existence?

    Would you ever hire anybody marriageable in an R&D role, when their ex might someday license all of your competitors? Perhaps that’s why they mostly hire engineers.

  43. J, He might be suing her because she had given her firm a license and has kept all the income — and has not give him his cut.

    I think that is a “breach of contract” case, not a patent infringement case.

  44. I think you are right LB. One should assume it is just market value trading for employment and compensation by the employee. No different than a person that owns a fish market and buys and sells fish all day. Maybe a fish has a diamond in it that is worth millions. The fish monger was just doing their job even though at one time technically the spouse may have owned half of the fish with the diamond.

  45. Sorry Ned if I was not clear – the point here centers on Legal title – not equitable title. I was poking a little fun at you because this is another case that supports my side of that discussion.

  46. I’m not so much interested in what hubby does away from the marital home. I’m more interested in the drain inventions hubby is making in his free time in the shed in his prone-to-flooding garden, all waited on, hand and foot, by dutiful wifey and discussing with her on the issue, day and night.

    She indoors might well think (with some justification) that the inventions emerging from the shed, made in her time and at her expense, are a joint effort, ab initio jointly owned.

    But she would be plainly wrong, right?

  47. Second, the genesis of this thread gives you that one example.

    Where? In the Taylor case? There was no assignment to an employer in that case. C’mon, pay attention here.

  48. no matter what the law is in your state.

    Did you borrow that line from Stanford’s legal team?

    The Roche’s of the world thank you for your continued ineptitude.

  49. To me the crux of this case is that he is suing her. The transfer was probably not defective, since to anyone else in the world she would probably consent to join the suit.

  50. anon, I am not sure that is what the Florida DC held.  Equitable Distribution does not necessarily mean equitable title. 
     
    However, the settlement agreement should have been clear on the point. 

     
    Sent from Windows Mail
     

  51. when two spouses are arguing over a patent that is owned by at least one of them.

    Can you try any harder to miss the point?

    Clearly here legal title is to both. That’s kind of an important point to keep in mind.

  52. Leopold,

    First, the argument is not flawed.

    Second, the genesis of this thread gives you that one example.

    C’mon people, pay attention here.

  53. That passes for legal analysis in your practice?

    In this context, yes. Ask a lawyer’s opinion of which way a judge will decide, when neither way is clearly legally right or wrong, but one leads to an absurd result and the other doesn’t, and that’s your answer.

    This is either a bad decision (i.e., overturn on appeal), or the rough situation above exists.

    This isn’t an amazingly good decision, but there’s nothing inherently wrong with splitting the baby however you want when two spouses are arguing over a patent that is owned by at least one of them.

    My point, which I haven’t been subtle about at all, is that it’s a whole different ballgame when you’re talking about a patent that has already been assigned for fair value in the ordinary course of employment, back when the wife was perfectly fine with hubby doing that for a living, with settled expectations all around.

    Ask any happily married wife whether she thinks she’s entitled to part ownership of her husband’s inventions at BigCo’s R&D department, that he trades for his paycheck.

  54. B-b-b-but that is absurd.

    LOL.

    You haven’t been paying attention to the real world much, have you IANAE? Most everything out there is ‘absurd.’ The real world is messy like that.

  55. It’s an absurd result, and it’s easy enough to rationalize it the sensible way no matter what the law is in your state.

    I agree.

  56. If it’s marital property upon conception/invention, then probably 75% of assignments out there do not convey full title to the assignee… the assigned patents are unenforceable without the consent and support of the spouse of the assignor.

    I don’t think that follows, even if consent is required. The failure to gain consent before disposing of marital property may give one spouse a cause of action against the other, but doesn’t necessarily make the transaction incomplete or void. For instance, California law expressly says that failure to give the required written notice before disposing of personal property used in a business that is community property does NOT affect the validity of the transfer or of the interest transferred. I don’t know why they would treat this situation any differently.

    To use anon’s favorite (flawed) argument, show me one advanced state that has held that a patent assignment to an employer is invalid or incomplete because there was no consent. Just one.

  57. Huh? That passes for legal analysis in your practice?

    This is either the right legal result or the wrong. I contend that it’s wrong, but if I’m wrong, then the assignee/hostage situation I described above is correct. You can’t have it both ways legally. This is either a bad decision (i.e., overturn on appeal), or the rough situation above exists.

  58. If it’s marital property upon conception/invention, then probably 75% of assignments out there do not convey full title to the assignee…

    Which is precisely why, when push comes to shove, that’s not the way the law will settle. It’s an absurd result, and it’s easy enough to rationalize it the sensible way no matter what the law is in your state.

  59. lol – not according to IANAE (for whatever magic-mushroom-induced reasoning he may come up with).

  60. It’s huge.

    If it’s marital property upon conception/invention, then probably 75% of assignments out there do not convey full title to the assignee… the assigned patents are unenforceable without the consent and support of the spouse of the assignor. She can hold the patent hostage, which is awesome for inventors who remain married and for bitter x’s all around the country.

    If it’s not marital property, then this should have been an equitable distribution of proceeds, and he should be allowed to sue the company for infringement.

    But, this case says that it’s the first instance, not the second.

  61. belongs to the employer (not the employee inventor) ab initio.

    Good point that reinforces my posts above. In the US this is expressly different. That is why this may actually be an issue – here the supremecy of invention ownership is NOT the corporation (despite the capture of the legislature by the corporations).

  62. That’s right, of course. The other problem with NWPA’s argument is that it’s not the expected value at the time of conception that matters, it’s the expected value of all your ideas at the time you sign the agreements that is critical. If you knew before you took the job that you were going to come up with a multi-billion dollar idea then you should have negotiated a better deal.

  63. The critical issue is the communal nature of the property at the time of invention.

    And what, specifically, is the article of property in question at the time of invention?

  64. Leopold – you are still missing the point.

    You are focusing on the wrong thing – what the spouses are fighting over at the time of divorce. That’s not the critical issue here. The critical issue is the communal nature of the property at the time of invention. You are playing in the weeds.

  65. What about pharma? What about a patent application that 5 years later is pulling in millions in license revenue? Whose to say what the valuation was at the time of the invention.

    Is it Secondary Considerations time again already?

    You’re confusing “valuation” with “hope”. Sure, some pharma inventions ends up being worth millions or billions, but they obviously don’t know which ones when the invention is made, which is why you always hear that they develop a thousand or so molecules for every one that makes it big in the marketplace.

    It’s like buying lottery tickets. Sure, one of them might be worth a lot of money, but you don’t know which at the time you buy them, and the expectation value is low. Still, once you hit the jackpot, you can bet your future ex is going to be angling for half the money, claiming she supported your dream all along and knew you’d hit it big with that one ticket.

  66. what the answer should obviously be

    And

    if you want 50 different laws

    LOL – I am glad that law does not work on how IANAE personally thinks.

    Do you even get the ignorance that you are displaying in your comments IANAE – I mean at the fundamental level?

  67. That’s a good point LB. It is like bartering during the day. Even though half of everything may be the spouse’s, the worker is just carrying out their employment and at the end of the day the gains from the employment are split.

  68. Close, but you too miss the point that the spouse is not a party to the employment agreement, so no amount of compensation from that agreement reaches a party that is not a signatory to that agreement.

    I didn’t miss anything. If the patent rights instantly become joint property at the time of conception, then so do any benefits flowing from the employed spouse’s employment, like the paycheck, or the bonus check. Whether the employed spouse lets the other one enjoy any of those benefits is a matter for the divorce court to deal with, if it comes to that.

  69. Just curious, not very deeply interested (how big a deal is this, really). Nevertheless: Would anybody care to comment whether either of the two considerations below has any relevance?

    1. In the UK, when a contracted employee conceives an invention in the course of his or her contractual duties, the conception belongs to the employer (not the employee inventor) ab initio. No other assignment instrument needed. Should it be the same with a spousal inventor? Does the union own the IPR or is the inventive half of the union the single owner?

    2. In the UK, property can be held under a joint tenancy or as tenants in common. When that property is to be divested, the difference matters:

    link to landregistry.gov.uk

  70. I don’t know IANAE. What about pharma? What about a patent application that 5 years later is pulling in millions in license revenue? Whose to say what the valuation was at the time of the invention. An argument could be made that the inventor and company knew at the time of the invention that it would be worth a lot of money.

    I think the problem with your argument is that it is only likely that someone will sue over a patent that is worth a lot. And going backwards and arguing that “who knew?!!” is not very persuasive. You always look like a thief trying to make arguments like that.

  71. Actually, no -you are once again completely off.

    This addiction of yours to Calvinball face sp1kes is incredible.

  72. Anon I think you are right. That leaves us with quite a mess. I don’t see any clean resolution of this. The implied consent that some seem to be offering up isn’t really clean answer.

    Humph. Seems like another point of law that will likely be ignored, but that a spouse may end up one day suing a corporation. Imagine a spouse who says they never consented nor were informed and here is that giant valuable patent pulling in millions in license fees. The spouse then divorces and sues.

    What a mess. Sounds like we do need the spouse on the employment agreement.

  73. expressly the point of this case is the exact opposite.

    Still struggling with the ol’ second language, I see.

    This case illustrates my point perfectly.

  74. Or state law could deal with it

    Sure, if you want 50 different laws on who owns a patent that an inventor purports to assign to his employer at conception. Personally, I’d rather look at what the answer should obviously be, and then find 50 separate state-specific rationalizations for that result.

    If the patent is still spouse-owned at the time of divorce, let the spouses fight over it. But next time maybe they should hire an actual lawyer to draft the settlement agreement.

  75. Leopold,

    Close, but you too miss the point that the spouse is not a party to the employment agreement, so no amount of compensation from that agreement reaches a party that is not a signatory to that agreement.

    I think you are on the right path with the State and its legislating how to deal with communal property.

  76. Probably safe to presume

    LOL – expressly the point of this case is the exact opposite.

  77. Probably safe to presume that a spouse would consent to any assignment in the ordinary course of employment, during a marriage. Most inventions aren’t known to be significant when they’re invented in any case.

    Or state law could deal with it by expressly providing that a spouse can dispose of any communal personal property without consent, provided it is done for fair failure. That’s the “what’s the difference?” approach that California takes. As you suggest, the expected value of an invention at the time of conception and when the employer assignment kicks in is pretty low, so the compensation (continued employment, patent bonuses, etc.) is almost certainly reasonable.

  78. I think that you are close, but still missing the point Alan.

    Think of it this way:

    Q1: Who has primacy over any invention, no matter what the employment assignment agreement is?

    A1: The inventor.

    First and foremost, this is the baseline of the discussion.

    Q2: Given A1, how does a spouse ownership of that primacy ownership (no matter what the employment assignment agreement is) affect standing?

    A2: the trick to the answer here is that this appears to be a state by state answer to the question of “who can do what with communal property?”.

    Keep in mind that a spouse is not a party to an employment agreement (this is where Malcolm goes off into the weeds above – basic contract law stuff). If in fact the spouse through the state law communal property law has instant legal title concurrently with the inventor, then this trumps any employment agreement that attempts to ignore this legal title.

  79. I don’t think a single spouse can release joint property if the property is significant and the other spouse hasn’t consented.

    Probably safe to presume that a spouse would consent to any assignment in the ordinary course of employment, during a marriage. Most inventions aren’t known to be significant when they’re invented in any case.

    The only time consent evaporates is when the other spouse still owns valuable patents during the divorce proceedings. Not an issue for employers, if they keep their ducks in a row.

  80. Don’t many employment agreements state that the employer has rights to the inventions of the employee during the course of their employment (with certain conditions and restrictions) and that the employee will then execute any necessary papers to formalize the ownership? Thus, the rights at conception belong to the employer, regardless of when the assignment is executed. At least, that is how I write such language.

  81. Ned,

    I am a little surprised you did not comment about the fact that the wife has legal title (as opposed to a part of equitable title).

    This does not fit your expressed views following the Stanford v Roche case.

  82. then an argument can be made that the worker never actually owned the patent.

    That’s why I mentioned a review of Stanford v Roche would be in order – the primacy of the inventor is emphasized and the inventor always owns the work first.

  83. I don’t think a single spouse can release joint property if the property is significant and the other spouse hasn’t consented. Probably the exact facts would be state by state.

    But, anon’s point is a good one. Does this mean we need to include spouses in assignment documents and in employment contracts? I guess an argument can be made that if the employment contract states that as part of employment you aren’t going to own the patent but turn it over to the company, then an argument can be made that the worker never actually owned the patent. Not sure. A fine point. But, I would guess if the employment contract is written just right, then it would work out.

  84. Well this case is certainly going to be of interest to Florida divorce lawyers. Obviously dividing legal title among two hostile parties is a recipe for disaster.

    The settlement should of been structured such that the husband/inventor retained title, granting the wife a beneficial interest of 60% in the proceeds. The fatal flaw in the settlement agreement was subjecting the patents to equitable distribution, which resulted in splitting title.

  85. LOL – sure, OK, let’s go with that.

    My guess is that McCracken has figured out that if you can’t beat them, you might as well join them.

  86. lol – different anon, Malcolm. But I have to say that where you merely parrot me, you are correct. Where you go on a frolic, you are simply wrong.

  87. anon (LOVE THE PSEUDONYM!!!!): One of the obvious problems in stating that patents (or inventions) are presumed marital assets is that an inventor’s property rights arise at conception.

    Hardly a unique problem. Lots of rights “arise” during marriage, with the details of their dispersement upon dissolution depending on state law.

    Does the employer now need to seek an assignment from the employee’s spouse?

    It would depend on state law. In many community property states, one spouse cannot legally sell or assign community property without the consent of the other spouse. On the other hand, it could reasonably be presumed (or argued successfully) that an employment agreement requiring assignment of intellectual property was consented to by a spouse who benefitted from the employment.

    This opinion should not need to reach the question of whether patents were presumably a marital asset. Title to the patents was decided by a divorce settlement agreement.

    Assuming patents had not been assigned previous to the divorce, that seems reasonable.

  88. Leopold’s point about a single spouse releasing joint property may suffice, but I have a feeling that such may be a state by state item, and something I do not think simply assuming would be in order.

  89. Zeke,

    On the contrary, the point being made here is that there are releases. In the US, invention (and hence patent rights) still must begin with the inventor. If that inventor is married, then the spouse has instant property rights – and that is before any assignment based on an employment agreement. Review the Stanford v Roche case.

    In order for the employment agreements to perfect the employers claim, there must be the releases you claim do not exist.

    Note that I could be completely wrong on this, but I haven’t seen anything yet to think that way.

  90. You might add that in most states, including even most community property states, one spouse alone is able to dispose of personal property acquired during the marriage, so a prospective patent assignment to your employee will almost always be effective. It’s possible that there is a state or two where someone could raise an issue, so it’s worth investigating if you ever get sued, as anon suggests.

  91. All necessary releases? There are no releases. The employee inventor has already agreed to assign inventions, typically at the time of conception, in exchange for employment, from which the spouse directly benefits. The funds and effort for the employee to invent do not come from the marriage, they come from the employer.

  92. Sorry Zeke,

    My post asking individual questions on each item of
    your reply has been eaten.

    Long story short – I do not think you are right under the law. I do not think “knowing who the spouse is” is required, and employers can very well require any prospective employee to obtain “all necessary releases” to the intellectual property created as a result of employment. This is quite common and accepted in business to business transfers.

    I also discussed the timing aspect as well as the legal status of such work (by law this is personal property – I do not know what distinction you are driving at with the labeling this as “creative” property – I don’t think the law cares about that). As to timing, I reiterate that the property question is immediate – and does not wait until a later event like divorce to raise the issue.

  93. Yeah…it’s an interesting academic point, but I can’t see it resolving any other way than an invention being personal, non-marital property, until decided later at divorce. This is the way other creative property works.

    The typical employer has no right to know or even ask whether you are married or common-law or what have you. Nor do they have a right to know who the spouse is.

    Imagine a spouse of a defense contractor having property rights to an invention covered under a secrecy order. Lol.

    Yeah, no court would ever find that way.

  94. Zeke,

    You jumped the gun with your answer to the different anon.

    The timing of the divorce is not a pressing issue. The pressing issue is whether joint ownership of all marital property innures at conception. Does the wife instantly own some of the invention at the time of the invention, and prior to any assignment to the inventor’s employer. Do employment agreements need to recognize the state of the assets upon their creation, and appropriately obtain assignments from spousal co-owners of communal property?

    The start of the timing of communal ownership is the driver – not the ending of the relationship and the dividing of the spoils.

    How many suits now in process have fully vetted this initial link in the title chain? Remember – the chain is only as strong as its weakest link.

  95. Of course not.

    If an invention’s been assigned then it’s no longer an asset that can be split during a divorce because it’s no longer an asset of the inventor.

    I mean, duh.

  96. This opinion should not need to reach the question of whether patents were presumably a marital asset. Title to the patents was decided by a divorce settlement agreement. One of the obvious problems in stating that patents (or inventions) are presumed marital assets is that an inventor’s property rights arise at conception. Does the employer now need to seek an assignment from the employee’s spouse?

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