Employee Inventors and Patent Ownership: Whose Rights Are They Anyway?

AuthorFred Carbone
Pages34-37
Published in Landslide® magazine, Volume 13, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2021 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
T o properly protect its intellectual property, a com-
pany should ensure that all employee-inventors have
properly assigned ownership in their patents to the
company.1 Indeed, all owners of a patent are required
to voluntarily join as plaintiffs in order for there to
be standing to bring a patent infringement action,2
and inventors are presumed to be owners unless they
have assigned their rights.3
The assignment of rights may be accomplished through
use of a written, signed instrument.4 The prompt recording of
such an instrument with the United States Patent and Trade-
mark Ofce (USPTO) is the most secure and effective way
for an employee-inventor to assign his or her patent rights to
the employer, for at least two reasons. First, it will prompt the
USPTO to issue a certicate of acknowledgment that “shall
be prima facie evidence of the execution of an assignment,
grant or conveyance of a patent or application for patent.5
Second, if an assignment is not recorded with the USPTO
within three months of its signing, the assignee runs the risk
of losing its patent rights to later, bona de purchasers or
mortgagees that did not have notice of the prior assignment.6
However, even without recording a written, signed assign-
ment with the USPTO, courts have found that assignments,
obligations to assign, or even licenses may exist due to
employment contracts, assignment contracts, or the nature of
the employer-employee relationship.
FilmTec, Arachnid, and the Importance of Clarity in
Assignment Obligations
When making determinations of patent ownership based on
contractual obligations, courts have often deferred to state
contract law.7 However, when determining whether a patent
assignment clause in an employment contract is an automatic
assignment or merely an obligation to assign, the Federal Cir-
cuit’s so-called FilmTec rule preempts state law.8 This rule is
discussed below in conjunction with what can be called the
Arachnid rule, which states that agreements to assign in the
future do not necessarily give rise to automatic assignments.9
These Federal Circuit decisions, issued just days apart, have
created fact-dependent boundaries for assignments by way of
employment or assignment contracts.
Specically, the Federal Circuit in FilmTec reasoned that
an assignment of rights to an invention that predates the exis-
tence of the invention may be viewed as an expectant interest
By Fred Carbone
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Fred Carbone is an associate at Baker Botts LLP. He practices in
all areas of IP law, including patent prosecution, patent litigation, and
licensing. He can be reached at fred.carbone@bakerbotts.com.
Image: GettyImages
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