Patent Ownership – Assignments
February 25, 2021 | Luke T. Mohrhauser
It is important to parse out ownership in intellectual property, as the owner(s) will control the rights of the IP. This includes, but is not limited to, control over use, enforcement of rights and transferability of the IP rights. The different types of IP have different laws and other rules indicating how ownership vests in creators and/or employers, patents included. In short, absent any agreement indicating how ownership of present or future inventions is to be handled, ownership of the patent rights, including at application and issuance, ownership vests in the inventors themselves. The present article will focus on ownership interests by an inventor’s employer and the assignment of rights to the employer by an inventor/employee.
As noted, in order for patent rights to transfer from an employee-inventor, an employer must have the employee agree to the transfer. Many employers include language in employee handbooks, policies, contracts or otherwise noted. For example, the assignment may be spelled out as being a consideration for the continued employment of the employee, as well as other perks, such as the use of the employer’s equipment to be able to work on inventions related to the employee’s job duties. For example, a designer for a manufacturer may be hired to create new designs for new products. The employer provides employment, as well as potentially state-of-the-art equipment for the development and/or testing of the designs. The employee gets to use all of this, and gets paid, while the employer is able to own any invention arising from the employment.
Any language addressing assignments should be made in the proper tense. For example, there can be different legal meaning for terms depending on their tense. Consider the following: “I agree to assign” vs. “I hereby assign”. The former is a future tense stating that the employee agrees or promises to do something in the future. Thus, until the employee actually executes an assignment for a particular invention, such as with the filing of a patent application covering the same, the employee may retain ownership. If something were to happen before such execution, such as incapacitation of the employee or the employee leaving the company, the employer may be out of luck and without complete rights to the invention.
The better language to use is the latter language, “I hereby assign” or similar language. Note that this language is in the present tense, affirming a present transfer of any and all rights, covering inventions even not yet invented. Such language indicates a present assignment of current and future patent rights in a future invention not yet invented by the employee divests the employee of ownership of those patent rights; once the invention is made, ownership automatically transfers to the assignee. It is still best to get an assignment for each patent application signed and filed with the patent application, but this will be done with knowledge that the invention has already been assigned.
The issue of assignment and making sure that the proper entity owns the rights to a patent application is of greater importance since the passage of the America Invents Act. This Act allows patent applications to be filed in the name of non-inventors, such as entities that have ownership rights to the subject matter. The easiest way to prove such rights are with assignments and/or assignment provisions.
Therefore, a regular audit of employee policies, handbooks, provisions and/or contracts is recommended. This will provide a chance to ensure that the proper language is included to protect both parties should any disagreement arise, and in particular, should indicate who has proper ownership of any invention or discovery made by an employee, such as in their normal duties of employment or otherwise on company time.
 See, e.g., IPVenture, Inc. v. Prostar Computer, Inc., 503 F.3d 1324 (2007).
 See, e.g., Picture Patents, LLC v. Aeropostale, Inc., 788 F.Supp.2d 127 (2011).
Luke T. Mohrhauser is an intellectual property attorney partner and co-chair, mechanical-electrical practice group for McKee, Voorhees & Sease, PLC. Email him at Luke.Mohrhauser@ipmvs.com.