By David Hricik, Mercer Law School
Over the years (sigh, decades) of being involved with ethical issues in patent practice, one set of problems that recurs involves assignments from employee-inventors. I was reminded of some of them by a recent article in Landslide Magazine by Fred Carbone (of my old firm, Baker Botts), entitled “Employee Inventors and Patent Ownership: Whose Rights are They Anyway?” (available, I hope not behind a paywall, here).
The article does a good job of laying out some of the thorns in the bramble bush of choice of law in interpreting contracts of assignment (which, of course, arises only when the assignor was an inventor, and inventorship can be its own thorny issue). The article points out some common law gap filling obligations that may require an assignment where no written agreement, or an ineffective one, is in place. Apparently, Mr. Carbone is going to give a talk on April 20, 2021 on other ways to obtain assignment (as explained on page 23 of the magazine).
One related issue that I’ve discussed more than a few times and seen arise repeatedly over the years is when, after a dispute arises between a former employee and former employer, the former employee asserts that he had believed that the lawyer who had represented the employer also represented the employee and that the employee had been an inventor and either was left off or was included as an inventor but did not owe an obligation of assignment. Sometimes that implicates Model Rule 4.3, which can require a lawyer to correct a non-client’s misunderstanding as to who the lawyer represents.
As a best practice, even if not required, including a written statement that the lawyer does not (or does) represent the inventor, or advising the inventor to obtain her own counsel, or both, may often be a good idea to avoid either misunderstanding or strategic behavior.