https://ocpatentlawyer.com/tell-others-about-idea-without-losing-invention-rights/The issue of patent assignments may arise in the context of employment agreements. Employers require employees to assign any inventions made for the employer to the employer. Otherwise, employees may own the patent rights to the invention even if the employer had invested the resources for the research and development to create the invention.
The following case illustrates a different scenario in which patent assignments arise, specifically, conflicting agreements. A Researcher working for Leland Stanford Junior University (“Stanford”) executed a patent assignment agreement wherein the Researcher agreed to assign any inventions to Stanford. Stanford and Cetus were jointly developing ways to determine the efficacy of antiretroviral drugs for HIV infected patients. During the joint research work, the Researcher also executed a Visitor Confidentiality Agreement containing an invention assignment clause which assigned all inventions of the Researcher to Cetus. Hence, Stanford’s agreement was in conflict with Cetus’ Visitor Confidentiality Agreement.
The different language used in the patent assignment clauses of the conflicting agreements was one of the key factors in deciding that Cetus owned the invention instead of Stanford. In the patent assignment for Stanford, the Researcher promised that he “will” assign inventions to Stanford which is an assignment in the future. In contrast, in Cetus’s Visitor Confidentiality Agreement, the language included the phrase “does hereby assign” which is a present assignment.
As a result of the joint research, Stanford ultimately filed a patent application on subject matter invented by the Researcher. After filing the patent application, the Researcher executed a patent assignment document which was subsequently recorded at the Patent Office. The Court held that title or ownership of the invention still vested in Cetus. At the time of filing the patent application, the “does hereby assign” language contained in Cetus’ Visitor Confidentiality Agreement immediately vested title in Cetus by operation of law. The later assignment from Researcher to Stanford was ineffective. Stanford v Roche 2008-1509, -1510 (Fed. Cir. Sept. 30, 2009).
Based on this case, it is important to understand the difference between the “will assign” language and the “does hereby assign” language that are typically found in invention assignment agreements.
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