2018] ASSIGNED ALL MY RIGHTS AWAY 449
had relied and invested.3 For equity purposes, courts authorized the equita ble
remedy of shop rights,4 and employers began contracting with employees to
make the employer the patent owner.5 These contracts utilize automatic
assignment clauses, requiring no affirmative action on the part of the
employer or the employee–inventor once the invention is made yet still
granting employers a remedy should an employee–inventor attempt to claim
the patent in his or her name.6 Courts have primarily treated assignment
clauses favorably, even though employers have drafted them to disadvantage
the inventors they hire by collecting inventions beyond the scope and term of
employment. 7 Courts have also expanded the protections available to
companies beyond contract law.8 These provisions and their interpretations
by courts have begun to reduce innovation 9 and restrict employee
mobility10—outcomes not anticipated by the Patent Clause of the
To resolve these concerns, corporations should alter the provisions from
automatic assignment clauses to right of preemption clauses to better
represent the interests of the potential employee12 and simultaneously
improve the work ethic of their employees, which can greatly benefit the
corporation.13 Another important step that should be taken to resolve
inequity between employers and employee–inventors would be changing
3. See Solomons, 137 U.S. at 346.
4. “Shop rights” are a remedy for employers that grants them im munity from liability for
infringing a patent belonging to one of their employee–inventors if the employee–inventor used
the resources or equipment of the employer to invent the patented subject. See Shop Right, BLACK’S
LAW DICTIONARY (10th ed. 2014) (“ An employer’s right to an irr evocable, nonas signable,
nonexclusive, royalty-free license in an employee’s invention, if the employee conceived and
developed the invention during the course of employment and used company funds and materials.”).
5. See infra Section II.B (describing the history of assignment clauses in emplo yment
contracts through historical jurisprudence).
6. As used i n this Note, “assignment clauses” are the contractual provisions that “assign,”
or grant, the ownership of patent rights to someone other than an inventor or joint inventor. See
RESTATEMENT (SECOND) OF CONTRACTS § 317 (AM. LAW INST. 1981); Assignment, BLACK’S LAW
DICTIONARY (10th ed. 2014).
7. See infra Part III (describing the imbalance of power between employers and
employee–inventors through the use of adhesion contracts, trailer cl auses, noncompetition
restrictions, and resource allocations).
8. See infra Section III.B (desc ribing the way state courts allow more legal opportunities for
employers than they do for employee–inventors with state law causes of action and trade secret law).
9. See infra notes 156–63 and accompanying text.
10. Employee mobility refers to “ the ease by which a skilled employee can leave one job,
join another company, and immediately apply his or her skills.” Charles Tait Graves & James A.
DiBoise, Do Strict Trade Secret and Non-Competition Laws Obstruct Innovation?, 1 ENTREPRENEURIAL
BUS. L.J. 323, 324 (2006) (emphasis added).
11. See infra text accompanying notes 263–65.
12. See infra Section IV.A (proposing that employers implement right of preemption provisions
to remedy the imbalance of power).
13. See infra notes 160–66 and accompanying text.