Following up on the Shukh v. Seagate petition for en banc rehearing, the Federal Circuit has now taken an important first step of asking Seagate for its response to the petition, due by November 13, 2015.
The issue here is the construction of an employment agreement where the patentee “hereby assigns” all future inventions (created within the scope of the employment). The Federal Circuit rule is that the agreement serves as an effective property right transfer such that, at the moment* of invention, rights to the invention automatically transfer to the employer.
One reason why the issues in the case are interesting to me is because the current Federal Circuit rule is contrary to the traditional property law notion expounded in the UCC that “a purported present sale of future goods or of any interest therein operates as a contract to sell.” Although relatively new, these same limits on property transfer stretch back hundreds of years in our common law history. In the background of the case is the notion that the Federal Circuit has created a federal law of assignment agreements that seemingly operates worldwide — again going against the norm that in the patents are to be treated as personal property in the exchange context, and personal property exchanges are normally governed by local state or foreign law.
In the patent context the question the Federal Circuit’s rule serves as an important and additional thumb on the side of employers rather than their employee inventors. In addition questions of legal tradition noted above, the the case raises important innovation policy questions and questions of inventor/employee rights. The issues here can be thought of as in parallel to other areas where the law places limits on how far employment contracts can go to strip an employee of her rights. Consider, for example, covenants-not-to-compete, inventions outside of the scope of employment, and post-employment secrecy requirements limiting what someone can do with learned skills and knowledge. In those contexts, the courts (and legislatures) have found that it doesn’t make sense to enforce overreaching employment contracts except when very particularly bargained for.
Employers obviously prefer the current rule because it so strongly favors them. Thus, I expect that any IPO/AIPLA (and probably PTO) commentary on this front will support the current automatic-assignment rule.
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* I included the asterisk next to “moment” of invention because of the reality that invention is typically a process distributed over time. As the courts have repeatedly written, invention begins with a full and complete conception of the invention remains inchoate until the invention is reduced to practice (either actually or constructively). Updated for spelling.
What legal right or rights does an inventor have in an invention:
1. Without any patent statutes; or
2. With patent statutes that require, among other formalities, that an inventor apply for a patent to obtain a patent?
I would argue that an inventor has no legal rights in an invention absent patent statutes and has nothing to assign.
Thus the only right an inventor has is the statutory right to apply for and, potentially, obtain a patent on an invention.
Now assume that the right to apply for a patent by the inventor cannot be assigned. The only thing that can be assigned is the patent that is obtained upon application of the inventor.
Now consider 35 USC 152. It requires a recorded assignment from the inventor for a patent to issue to an assignee. Assignment of what? Of the patent that will issue on a specific application.
Does anyone disagree with this so far?
So when one presently assigns a future invention, what does that mean in fact? In fact, it means nothing. The only right the inventor has is to apply for and potentially obtain a patent. But the right to apply cannot be assigned; and the right for the assignee to obtain title to a patent on issue is conditioned on their recording an assignment from the inventor identifying the specific patent application.
This is not to say that the right to obtain patents on application may not be assigned without recording. But it does suggest that any assignment of title must identify a specific application or patent.
You lean too hard on something too simple.
As mentioned below, “choices of action” are alienable property.
Thanks to Troubled at 8, for raising a good point.
The 102 and 103 prior art effects of an earlier filing A at the USPTO on a later filing B can depend on who was it that filed A. To me it makes good sense to put the burden on B to show that A is NOT prior art effective against B.
But I think the public needs to know whether A has a prior art effect on B, so it can come to a view on the validity of B. The reality is that B will likely get through to issue before A has been applied against B and before B has been asked to discharge its burden. Is the issued B in fact invalid? How can the public know?
Now B of course is in a position to know whether A is in common ownership (if there was any “obligation to assign). But how about the public? In the real world, how does it find out whether A is or is not prior art to B?
Or do such issues not matter enough to worry anybody but me?
I ask because under the EPC the prior art effect of A on B is present regardless whether or not there is any common ownership. The founding fathers of the EPC were alive to the difficulty when they drafted the EPC in 1973 and wished to minimise legal uncertainty. Either A is earlier or it isn’t, Y/N, and ownership is irrelevant. Kudos to them!
Asia of course follows the USA, in making common ownership a release from the prior art effect. Hence, those outside Europe who apply for a patent inside Europe are frequently surprised and dismayed when they find out that common ownership is not effective as a way to dissolve away the prior art attack.
The Minutes of the Tegernsee Group on this issue (prior art effect of earlier filings) are revealing. Those speaking for Japan explained why common ownership is a necessary excuse. You see, when Big Corp files a heavy stream of patent applications, it is simply too burdensome and onerous to screen each one to see whether it, Big Corp, has already filed something on an earlier date that is prejudicial to the novelty of its later filing.
So when it comes to a balance between the public interest and that of Big Corp, which shall prevail? Is it necessary to point out to you that the AIA, in confirming that earlier filings, anywhere in the world, are good for obviousness attacks, but excusing own earlier filings, simply tilts the balance even more in favour of Big Corp. It ain’t right, is it?
Max, I fully agree with your argument here that excusing commonly owned inventions as prior art is inexcusable from a public policy point of view. So much for that “transparency” that was shoveled in our face for so long by those who sought to impose upon us the so-called transparency of the AIA.
We need to revise the AIA in a number of ways. One of these ways is to get rid of patents and patent applications is prior art as of their filing dates. This will almost automatically solve the problem of common ownership.
Ned,
I am not sure that I see the “solution” in your answer.
Are you also including an elimination of the option of non-publication? Are you inserting an “immediate” publication requirement as well?
Lastly, are you conflating what the legal person of PHOSITA is with actual real people in your “solution?” By this I mean, that the timing aspects reflect what the more-powerful-than-any real-person legal person can have in their repertoire and that the 102/103 effects of the legal person are meant to be more reaching than any actual real person.
Eliminating any prior effect of application filing dates would introduce frequent cases of two different companies claiming ownership of the same invention, since often companies are doing R&D along the same lines. Do you really think many folks with votes [i.e., other than commentators on this blog, who have no influence] really want to scrap the AIA and go back to Byzantine interference litigations, with surprise alleged prior secret invention date invention ownership claims by others after one has made big product commitments, plus alleged secret 102(g) prior art litigation defenses against one’s patents?
Paul, going back to interferences is not what I suggested, not at all.
The first to file get the patent in the case when two patents or applications are claiming the same invention.
Once again, the posts by Paul lack any touch with reality.
a) Do you not recognize that what you call “Byzantine interference litigations” was ADOPTED fully into the AIA? You have drunk the “Kool-aid” of “ooh, that’s too difficult, let’s change ” – But not really change.
b) Your “really want to scrap” runs the fallacy as if our “influence” here makes following the law some type of “gee, let’s VOTE on this” when it comes to whether or not Congress has explicitly made the AIA into a ALL OR NOTHING sink or swim massive too-big-to-fail-but-Ooops-WILL-fail piece of legislation by expressly NOT including the separability amendment.
I am STILL waiting for you Paul to man up and advance an actual legal argument against my position. And yes, I just won a large wager in Vegas that you would post again without doing so – Thank$.
Max, under all new [AIA] U.S. applications, once earlier filed application A is published at 18 months after it is filed [as something like 90% are?] A will become prior art against any B application filed after that publication date. That considerably reduces the number potentially of less clear situations.
[As previously noted, the EPO “novelty only” prior art situation for prior UNpublished applications as of filing dates leads to LOTS of problems.]
“A will become prior art against any B application filed after that publication date.”
Actually, A is prior art against any B applications filed after A’s filing date. This will be different than “that publication date”
Paul, does this change the calculus with your view of “[As previously noted, the EPO “novelty only” prior art situation for prior UNpublished applications as of filing dates leads to LOTS of problems.]”…?
I note (with some small sense of irony) that the fact that the equivalent of our 102 and the equivalent of our 103 is differently treated under the EPO for items EQUALLY not available (the UNpublished set).
And yet, here in the States, the rationale for equal treatment – having to do with the legal person of PHOSITA, and contrasting with any “real person” of an inventor – seems “under appreciated”…
RE: “Actually, A is prior art against any B applications filed after A’s filing date.”
Not if they were commonly owned as of their filing date and B is filed before A is publishished, which was the subject I was responding to.
“Novelty only” systems as in the EPO if literally applied allow any other company to claim obvious slightly different aspects or applications of the same invention in B applications if they are filed before A is published, because A is NOT 103 obviousness type prior art to B applications.
Considering how easily electronic data storage systems are being hacked these days for competitive intelligence, even with government sponsorship or participation, there is an increasing danger that competitors may gain access to filed but unpublished patent applications.
Paul, I will acknowledge that some see the robust prior art effect of a patent application as of its filing date to be a benefit. But if we ever seek true harmonization, we will have to end the prior art effect of applications for invention purposes.
The larger goal is more worthy that the private interests of some.
“ But if we ever seek true harmonization,”
Ned – you are preaching the mantra of Big Corp, and I am truly not sure whether or not you are even aware of that.
What exactly is this “larger goal” of some One World Order which necessarily must come at the expense of the U.S. sovereign?
That would NOT be “harmonization” for any of the many countries that give give “novelty” prior art effect to prior application dates.
Paul, if we remove 102(a)(2) from 103 prior art and strike 102(c) and (d), we will be harmonized with the ROW on prior art.
That leaves the issue of the grace period. Since we have provisional applications, I say, strike the grace period and let people file their publications as provisional applications the day before they publish them.
Paul, as you say, we have been over EPC Art 54(3) before. But do me a favour could you and remind me what those problems are. I have forgotten.
Max, see 10.3.1.1 immediately above.
Thanks Paul. To my mind though, it hardly amounts to your apocalyptic “LOTS” of problems. Yes, of course, it is not fanciful to suppose that, one day, people will routinely hack in to PTO data, but I dont see it yet. And as to the 1973 EPC at the EPO, after 35+ years, I have yet to see the novelty only Art 54(3) provision cause the chaos you envisage. Not that the sky will never fall, of course.
“but I dont see it yet.”
There are none so blind as those that will not see.
Wake up MaxDrei, Edward Snowden and the Chinese want to speak to you.
Paul, you of course knew that for the first hundred and 50 years or so of this Republic that we existed without patents being prior art as of their filing dates without any problem whatsoever.
The Supreme Court case that suggested that patents should be treated as prior art as of the filing dates did so because the patent was deemed to have been invented on the dated it was filed. This is a first to invent concept that is alien to first to file environment.
There is no justification to have patents and published applications to be prior art as of their filing dates for any reason. None whatsoever.
The law has always provided that two patents cannot exist on the same invention. This was prior to the creation of this Republic — it was a rule of common law. That is why we had interferences in the United States. When two patents or patent applications claimed the same invention, we allowed the first to invent to obtain the patent as against the first to file. But when first to invent is gone from the law and the first to file prevails, and when two applications, or an application and a patent are claiming the same invention, all we have to do is accord effect to the priority of the first to file an award the patent to that applicant.
There is no requirement to make a patent or patent application prior art as of its filing date to prevent two patents on the same invention.
The mechanisms of interferences have been adopted by the AIA.
Paul seems blithely unaware of that.
The AIA only has very limited “derivation” proceedings, which are very different in both scope and other requirements from interferences. As far as I am aware, none have ever yet been instituted. That is not surprising, since in only a small percentage of interferences was “derivation” ever even asserted.
The mechanisms were carried over – virtually unchanged.
As I said, you don’t seem to recognize what IS.
Good post, although the title of the post is not accurate. The court has not “look[ed] for brief” or asked for briefing on this issue yet. It’s asked for a response to a rehearing petition. When one says asks for briefing on an en banc issue, that sounds like it wants actual briefing on the issue. A bit technical, but an important distinction.
Somewhat related to Paul’s comment at 6 is pre-AIA 103(c)(1) which disqualified prior art under 102(e), (f), and (g) developed by another inventive entity if “the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.” 103(c) was added by Pub. L. 98-622 (1984), omitting 102(e) which was added by Pub. L. 106-133 (1999).
(AIA 102 carries this over to (b)(2)(C), but the critical date is the effective filing date.)
Thomas.gov does not have legislative history before 1995, but Chisum on Patents (1995) reproduces the legislative history in Appendix 22. From it, “[T]he bill changes a complex body of case law [In re Bass and In re Clemens] which discourages members of research teams working in corporations, [etc.]”
Summarizing further: Prior art is not considered provided “it is commonly owned at the time it is made.” The prior art can still lead to anticipation (double patenting not allowed) and only inventors can be named on patent applications. The applicant has the “burden or establishing that it was commonly owned.”
But note, the law says “or subject to an obligation of assignment.” The legislative history states that the language is more precise than a parallel H.R. 4525 which said (according to the CRS) “is known only to applicant by virtue of his or her employment.”
Congress apparently thought that an obligation to assign was good enough to transfer ownership.
Troubled,
You may want to read again the Stanford v Roche case and notice that the particular language of that “obligation to assign” is absolutely critical.
Only because Stanford v Roche was wrongly argued, ignoring California contract law [never even presented] and the Supreme Court landmark decision in Erie Railroad Co. v. Tompkins (1938).
Federal law, that is the patent statute, does not control employment agreements or other invention assignments other that the limited effect of 35 USC 261 for patents and patent applications, and the joint ownership provision of 35 USC 261,which allows any joint owner [absent agreement to the contrary] to independently do anything they want with the entire patent with no accounting to the others. [Even worse, per case law, they cannot SUE to enforce the patent without voluntary joinder of all other joint owners.]
…wrongly argued…?
Um, take a look at how it was decided.
Paul, agreed. The Stanford attorneys threw their client under the bus when they did not argue the point about Erie Railroad v. Tompkins and that Filmtec was wrongly decided, not only being in violation of controlling Supreme Court authority, but also wrongly decided as a matter of common law.
Cooly of Palo Alto, and Jones Day of DC were on the brief at the Supreme Court. I don’t know who represented them at the District Court.
Of course, Stanford self they have told their own attorneys not to assert that Filmtec was wrongly decided
Troubled, Congress apparently thought that an obligation to assign was good enough to transfer ownership.
No! All this says is that Congress thought that an obligation to assign was enough to bring the subject invention within the doctrine – exclusion from being prior art for obviousness purposes.
Ned,
At the risk of beating my observations to death, according to the legislative history, the applicant has the “burden or establishing that it was commonly owned.” It omits any mention of a burden to establish an obligation to assign. Was that an oversight? Very possible, but the history says that this version is more precise than a previous bill.
” made, owned by the same person or subject to an obligation of assignment to the same person”
“Owned” or “subject to an obligation….”
The statute itself recognize that an obligation to assign is not ownership.
Patents are not subject to most “other” property laws or principles (which are governed by state codes and common law). They are U.S. Constitutional grants, as determined by Congress and the federal courts, and are governed by a balance of the public interest – to promote progress with limited exclusivity. Contracts relating to chattel or goods, like the UCC, are generally not applicable to patents (the UCC does include an implied warranty provision that a seller’s products do not infringe any patents).
Employment agreements that assign all inventions conceived or reduced to practice within the scope of employment promote progress by providing employers with incentives to hire inventors and invest in R&D, while providing inventors with employment, training, resources and motivation to invent. Since new employees usually do not have an invention when they begin their employment, it is appropriate for an employer to require an assignment of inventions conceived or reduced to practice within the scope of employment, before the inventor is hired. Also, because many inventors come up with many inventions within the scope of their employment, it is more efficient to include all inventions within the assignment provision of the employment agreement.
While such assignments of future inventions are common in employment agreements, it should not be forgotten that they are not required by federal law and are subject to negotiation along with other terms of an employment agreement.
Not exactly right, Jai Rho – the UCC does include mention of patents as a particular type of personal property.
That being said, the UCC leaves things, shall we say, a little cloudy.
Of possible interest (albeit a tangent): link to ladas.com
“Patents are not subject to most “other” property laws or principles (which are governed by state codes and common law). They are U.S. Constitutional grants, as determined by Congress and the federal courts, and are governed by a balance of the public interest – to promote progress with limited exclusivity.”
The SCOTUS has repeatedly held otherwise, C.J. Rho.
JR, The problem comes up when the employed inventor files a patent application on an invention which he claims as his own. If there is a present assignment of this invention to the employer, the employer owns it. If there is only an obligation to assign, the employer still must claim its rights in that invention.
Now there was a recent case (circa 2007) where the inventors filed a patent application on an invention that was arguably related to something he was doing at his employer; but he did it on entirely on his own time. He and others invested heavily for more than a decade in developing that invention. And, when they went to court against an infringer, the infringer obtained an assignment from the original employer of the invention. The court held that the infringer now owned the patent, and the inventor could not assert any defenses such as statue limitations or unclean hands.
When I first read this decision, I went ballistic. Do you have any idea why I went ballistic?
Ned, I don’t. Sorry.
How important to the outcome is it, what sort of employee the inventor was at the time of making the invention? Suppose the inventor was Head of Research. Does such an employee have any “own time” at all, in which to make inventions within the field in which she is employed as Head of Research? Isn’t she a “paid to invent” person, even when she’s asleep? It would be unconscionable for her to assert that “I made the invention in my own time. So, it’s mine, and never mind whether it’s in the field of research of which I’m the Head”
Conversely, suppose the inventor is a base level junior laboratory technician in the research labs of her employer. Now she does have some “own time” and if she makes inventions in her own time, even in a field being explored by the Research Labs, good for her, I say, and that invention ought to be her property, I agree.
Max, the point here is not that the employer can properly arrange for assignment of inventions to the employer from the employee in the proper case. The point here is rather that the employer must prove that the invention is subject to the contract for assignment when there is a dispute and must prove that in court in a proper case. Otherwise you are stripping the employee of all rights and treating him or her little more than as cattle.
It’s worse than that – MaxDrei’s graduated scale makes it more punishable for being more creative and climbing the corporate ladder.
I don’t think that MaxDrei has had experience in the real world climbing that selfsame ladder. He seems far too eager to remove the personal time of those “higher up,” as if they ARE chattel of “Big Corp.”
For the graduated scale, see the UK statute from 1977, Sections 39-43, on employee inventions.
…link…?
(with, of course, a note of admonition NOT to allow any “comparative analysis” to cloud the fact that what mayhave been “OK” for the UK should not be confused as being “OK” for the US)
{Resubmitted in view of mystery filter]
Max, what position the employee was hired for makes a big difference only in those countries that have statutory “inventor compensation systems” under which anyone not hired for R&D may get large financial payments from the employer in some cases for their inventions.
[Such laws can discourage multinationals from putting R&D facilities in those countries.]
Good point Paul. The UK provisions were indeed inspired by the German ones. At the time (1977) it was thought they might stimulate innovation in the UK, lifting it closer to the German level. It didn’t, of course, because the culture of innovation is different in UK and Germany. We continue to see loads of technological innovation in Germany and very little in England. Sophisticated multi-nationals (like GE) continue to place R&D in countries where there are statutory inventor compensation schemes, like Germany. They get the best innovators there, and the statutory compensation schemes are open to various “work arounds” that will eliminate any chance of a nasty surprise for the employer.
The only multi-nationals the schemes discourage are the thick-headed and inflexible ones, not interested in innovating their way ahead. Tax decides where to locate. Covidien is one example. Pfizer and Allergan another.
Remember that saying, from your President General Dwight Eisenhauer wasn’t it: Our technical progress? Why, it’s because our Germans are better than their Germans. The Employee Inventor Law of Germany was introduced by a guy called Adolf, to foster a culture of innovation and to declare that innovation is “a good thing” for the country. It has worked pretty well, over the years, for Germany but perhaps doesn’t work at all, in English common law countries.
Having strong patents used to be OUR sovereign advantage (your much-maligned presumption of validity, as a matter of fact was one big part).
Then people actually started believing the anti-patent propaganda.
What Paul does not seem to understand is that employees are not cattle.
Max, there is no doubt that the ability to enforce a patent was a prime reason for America’s inventive progress for such a very long time. That is now being crippled by big business. It is my understanding that investments in startups in Silicon Valley have fallen off dramatically because of cases like eBay, and because of IPRs. The American Golden goose has been slain.
It is guys like Paul Morgan who are responsible.
Max, regarding the UK and innovation, you have to ask yourself whether the EPO or European patent system is really working to foster invention in startups. It appears to me that the European patent systems are enormously expensive, and patents are subject to oppositions which are themselves expensive. Then there’s a matter of enforcement. It does appear that the patents are enforced in Germany but not so much in England.
I would think that Europe might want to look at ways of reducing costs to make the system more affordable for small businesses, and more enforceable by also looking at European wide remedies.
Max, we once investigated the UK as a possible location for R&D. We decided not to go there because of the “class” problem. That is never going to be fixed by a patent system. The Brits have to figure out that that they are their own worst enemies.
As some of the commentators have noted, patent applications are increasingly joint inventions with plural named inventors, usually from the same company. Contrary to the views of some employed inventors who would like to have their names on everything, companies have no legal, financial, or other incentive to leave any actual joint inventor of a patent application. Rather, a strong incentive to put too many names on a patent application and to leave them on even after the claims are changed in prosecution. Furthermore the AIA has made it even easier to correct erroneous inventorship designations.
As another commentator notes, there is no good reason to add an additional old layer of legal complexity to the process of employed inventor invention assignments. As an analogy. you may recall that medieval English property law required manual transfer of a clod of earth from the land to complete a land transfer.
PM: there is no good reason to add an additional old layer of legal complexity to the process of employed inventor invention assignments.
Agreed.
Paul,
As I indicated to Prof. Crouch, the machinations in the drive towards the AIA are definitely worth some study.
It is no accident that the AIA was heavily influenced by the “it takes a village” mindset which coincides with the Large Corp multinationalism “concerns.”
But let’s be perfectly clear: what is in the interest of Large Corp multinationalism is NOT in the interest of the US sovereign.
Respect of sovereign does tend to get in the way of a One World Order with our constitutional basis of patent law.
Yet another “inconvenience” to those wanting to make the patent right a lesser “efficient breach” infringement business “contract” matter rather than a “real person” personal property matter. – as witness by the comment of Fred Rule: “The current rule is a hack to get us in to the same end that other countries more sensibly provide for, ownership vesting in the company in the first instance.” Note Fred’s inclusion of the subjective “sensibly,” which is ENTIRELY debatable – and in fact – is NOT sensible when one considers the history of our sovereign: we PURPOSEFULLY wanted this to be a real person thing, with that real person having power to then fully and freely alienate that property right.
We (the US patent system, based on established views of that system reflected in award winning historical journalism) do NOT want the Corporate “person” to have that power, and it is only by Us (the royal Us) falling asleep to the “slow boil” that we are in danger of losing that very precious piece of our sovereign identity. We really so need to be aware of (and beware of) the encroaching power of multinationalism and corporatism, as such entities may want “rights” in all of the sovereigns, but truly owe NO allegiance to ANY of the sovereigns.
Paul, as a rule of thumb, there is no vice to include as named inventors those who are not inventors. But there is a severe problem if an of the subject matter claimed is not named.
Ned,
I have to disagree, if not on principle alone.
The oath being sworn to by ALL inventors should not be “cheapened” by such “catch-all” manner of including everyone and “meh-so-that-person-rally-was-not-an-inventor>”
Also, on a recent thread there was a discussion of the danger of individual contributors being able to “defeat” the group by sub-licensing and the difficulties of having to bring all “owners” in for any enforcement actions.
Believe it or not, there to this day remains many smaller entities gobbled up into larger entities that have a wide variety (including no) of employment agreements – with and without clauses assigning inventions to the corporation.
I do believe that your post exhibits a needlessly cavalier attitude in this regard.
Looks like I’m wrong about the panel judges. It is very likely that this request for a response, made just a day after the filing of the petition, came from a panel judge. En banc petitions first circulate to the three-judge panel.
So, there might be one or more en banc yes votes among the panel judges.
Not clear if it came from a panel judge or the motions judge on duty this month.
I don’t think a rehearing petition (whether en banc, panel or combined) would ever go to a motions panel:
Action on a petition for rehearing en banc that is part of a combined petition for panel rehearing and rehearing en banc will be deferred until the panel has acted on the petition for rehearing. A petition for rehearing en banc that is not combined with a petition for panel rehearing will be presumed to request relief that can be granted by the
panel that heard the appeal; consequently, the clerk will send
the petition for rehearing en banc promptly upon filing first to the panel in accordance with IOP #12, paragraph 1(b), and action on the petition for rehearing en banc will be deferred until the panel has had
the opportunity to grant the relief requested.
— IOP #14(2)(a)
The current rule is a hack to get us in to the same end that other countries more sensibly provide for, ownership vesting in the company in the first instance. If a person is employed to invent, that person shouldn’t have any ownership interest to start with (which is a separate issue from rewarding invention financially on a patent-by-patent basis).
And does it really make a difference, other than creating more friction for the employer to perfect its ownership? If employed to invent the employee has a duty to assign, as also expressed in the employee agreement, so the company has equitable ownership. Without the ability to take an assignmeet of future rights, the employer will, I suppose, instead have to go to court to have the court grant legal ownership of the invention. But you get to the same place, just at a greater cost, which isn’t in our societal interest.
Fred,
see above – the US “social interest” is known to be different.
Fred, I think the Supreme Court in Stanford v. Roche held that inventions are initially owned by their inventors – and this appears to be a matter of federal law as opposed to state law.
The assignment of inventions can be a matter of state law, but not its initial ownership.
Do you agree or disagree?
Agree, under the current statute.
This was exactly my reaction, too.
We currently have System (A): An employer and employee sign one agreement, and it automatically assigns the future creation of IP. It’s convenient, certain, and relatively painless.
Under consideration is System (B): The employer and employee have to re-execute the contract every single time, for every single patent. This system raises questions like: Does the conveyance of a particular patent also cover continuations, or continuations-in-part? – or do the employer and employee have to re-sign the contracts again for every such follow-on application?
System (B) creates all kinds of “gotcha!” loopholes, like where an employee has assigned 47 patents to his employer but not the 48th – and the employee can then:
(1) Convey the rights to a competitor as a get-out-of-infringement card; or
(2) Sue the employer for infringing the employee’s patent – and the employee certainly has intimate knowledge of the infringement, because the employee built all of the employer’s products to centrally rely on that particular invention, and the employee now basically has a gun to the employer’s head and can demand $$$$$$$$$$$$$$$$.
Why in the world would anyone advocate for System (B)?… I mean, for any purpose other than further weakening patents?
David, I am somewhat shocked by your statement. It seems to say that many companies right now do not obtain assignments of their patent applications from their inventors when they file patent applications. That is contrary to my experience. Please confirm what you just said.
Ned,
Sadly, I can confirm what David says.
As I posted above – many smaller entities lack employment agreements (at all) or have agreements with a wide variety of requirements to assign.
Criminy, the Stanford case itself showed an entity with such a poorly drafted agreement. Stanford. The very same school associated with Lemley. If they did not take care “to do it right,” why would you ever assume that the vast number of small (or even medium or even large) organizations “do it right” – or for the large “gobble them up” corporations can even force redo’s of employment agreements on those smaller entities that they so gobble up?
Anon, what I am talking about is patent attorneys filing patent applications and not obtaining assignments of the patent applications from their inventors without either the serial number of the application or the title of the application in the assignment, the latter when the assignment is filed with the application.
I understood David to say that this is not being done today by law firms. I am incredulous.
I think that you are re-phrasing what David is saying to a much much more narrow set of circumstances, that is quite divorced from the larger topic at hand.
Move the goalposts back, Ned.