Patent attorneys and employment lawyers are becoming creative when crafting invention assignment agreements. When I worked as an engineer, my employer’s invention assignment agreement was straight forward. I aassigned all inventions created on the job to my employer. Back then, this was a typical invention assignment clause.
In the following case, an employer had its employees execute an invention assignment agreement in which the employees assigned all inventions related to the employer even after the employees went to work for another employer. One of its employee eventually went to work for another employer. During the new employment, the employee obtained a patent on an invention and assigned the invention rights over to his new employer. When the new employer asserted the patent, the defendant attempted to avoid liability by arguing that the new employer did not own the patent. In particular, the defendant asserted that the invention belonged to the former employer and not the new employer due to the employee’s invention assignment agreement.
The Court held that recordation of the assignment of the invention from the inventor to the new employer (i.e., Global Locate) provides a presumption of validity of the assignment. The burden of proving otherwise, fell on SiRF (i.e., defendant) which they could not do.
There are two lessons to be learned. First, get patent assignments and file them as early as possible, and preferably with the filing of the patent application. Second, record the assignments since presumptions are advantageous. The opposing party may not be able to rebut the presumption. Plus the cost to record the assignment are nominal compared to the cost to prepare and file a patent application. SiRF Technology v. ITC 2009-1262 (April 12, 2010).
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.