Open Access. Powered by Scholars. Published by Universities.®
Articles 1 - 2 of 2
Full-Text Articles in Law
Patent Assignments By Employees Demand Better Protections, Chuan Ai
Patent Assignments By Employees Demand Better Protections, Chuan Ai
Chuan D Ai
Two problems make it nearly impossible for a buyer of patent rights – either as an assignee or a licensee – to know if the title is clean. First, there is no single central registry where all economic rights to patents are stored and searched. Patent assignments and licenses may be recorded at the U.S. Patent and Trademark Office, merely as an option. More significantly, for the vast majority of inventors in the U.S. who are employed and obligated to assign their future patents invented on the job, there is no way to record such pre-invention assignments. To remedy this …
Patent Assignments By Employees Demand Better Protections, C. David Ai
Patent Assignments By Employees Demand Better Protections, C. David Ai
Chuan D Ai
In the decision of Stanford v. Roche, the Court of Appeals for the Federal Circuit focused on the assignment clause in two contracts signed by the same inventor, and compared the language of “I will assign and do hereby assign” (in Cetus/Roche’s contract) against “I agree to assign” (in Stanford’s contract). The Federal Circuit failed to examine the completely different contexts of the two contracts -- Roche’s Visitor’s Confidentiality Agreement versus Stanford’s Employment Invention Assignment Agreement -- thus suggesting that an assignment clause in any contract carries the same weight. Increasingly, IP assignment language appears in a variety of contracts, …