{"id":54,"date":"2015-08-18T19:21:15","date_gmt":"2015-08-18T23:21:15","guid":{"rendered":"https:\/\/ipmanagement.harnessip.com\/?p=54"},"modified":"2015-08-19T09:45:14","modified_gmt":"2015-08-19T13:45:14","slug":"i-agree-to-assign-and-hereby-do-assign","status":"publish","type":"post","link":"https:\/\/ipmanagement.harnessip.com\/?p=54","title":{"rendered":"“I agree to assign and hereby do assign”"},"content":{"rendered":"

Personalized User Model, LLP v. Google Inc.<\/em>, [2014-1841, 2015-1022] (August 18, 2015),\u00a0reminds us that an employee agreement will preferably include a immediate assignment of\u00a0the employee’s inventions.\u00a0Personalized User Model sued Google for patent infringement.\u00a0 In the course of discovery, Google learned that the patented inventions were conceived while one of the co-inventors was employed by SRI.\u00a0 In a move worthy of Harvey Specter and Mike Ross in Suits<\/em>, Google attempted to acquire SRI’s rights in the invention.\u00a0 Unfortunately for Google, the Federal Circuit\u00a0agreed with the district court\u00a0that the statute or limitations prevented Google from asserting a breach of contract action against the co-inventor.\u00a0 The result likely would have be very different, if, instead of simply agreeing to assign inventions conceived during employment:<\/p>\n

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I agree to execute such documents, disclose and deliver all information and data, and to do all things which may be necessary or in the opinion of SRI reasonably desirable, in order to effect transfer of ownership in or to impart a full understanding of such discoveries, improvements and inventions to SRI.<\/p>\n<\/blockquote>\n

the agreement provided that the inventions automatically belonged to SRI.\u00a0 While one can forgive this lapse in an agreement drafted more than thirty years ago, today it is generally advisable to have an automatic assignment.\u00a0 Several years ago in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc<\/em>., 583 F.3d 832, 842 (Fed. Cir. 2009) the Federal Circuit explained that the language “agree to assign” is merely an\u00a0agreement to assign in the future requiring a subsequent written instrument.\u00a0\u00a0In contrast, the words \u201cdo hereby assign\u201d have been construed as a\u00a0current \u00a0assignment of future inventions.\u00a0\u00a0<\/i>See FilmTec Corp. v. Allied-Signal, Inc.<\/i>, 939 F.2d 1568, 1572-73 (Fed. Cir. 1991).\u00a0 If SRI’s agreement had included a current assignment of future inventions, SRI would have had ownership rights to sell to Google, irrespective of any breach by the employee.<\/p>\n

Personalized User Model<\/em> is a great reason to review existing employee agreements, and to make sure that they include a current assignment of future inventions.\u00a0 Of course, if your agreement does provide include a current assignment, you have to make sure that the rest of your paperwork is consistent.\u00a0 Thus, rather than having the inventor subsequently execute an assignment of a particular invention, one should have the inventor execute a confirmation of the prior assignment of that invention.\u00a0 Furthermore, if because of some business arrangement, a company want to\u00a0assign rights to some third party, the company must do so itself (because of the automatic assignment), and an assignment from the employee would be ineffective to do so, because the rights had already been assigned to the company.\u00a0 Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc<\/em>., 583 F.3d 832, 842 (Fed. Cir. 2009).<\/p>\n

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 <\/p>\n","protected":false},"excerpt":{"rendered":"

Personalized User Model, LLP v. Google Inc., [2014-1841, 2015-1022] (August 18, 2015),\u00a0reminds us that an employee agreement will preferably include a immediate assignment of\u00a0the employee’s inventions.\u00a0Personalized User Model sued Google for patent infringement.\u00a0 In the course of discovery, Google learned … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[5,4,6],"tags":[],"class_list":["post-54","post","type-post","status-publish","format-standard","hentry","category-agreements","category-assignments","category-employees"],"_links":{"self":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/54","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=54"}],"version-history":[{"count":1,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/54\/revisions"}],"predecessor-version":[{"id":55,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/54\/revisions\/55"}],"wp:attachment":[{"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=54"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=54"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipmanagement.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=54"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}