The Federal Circuit’s recent decisions on the assignment of future inventions have drawn a sharp distinction in what would appear to be minor difference in language that have major consequences and significance to ownership. The language turns on the difference in the phrase “agree to assign” and the phrase “do hereby assign.” Under the Federal Circuit’s interpretation, the former language (“agree to assign”) is only a mere promise to assign inventions that are created in the future and requires a subsequent assignment agreement, while the latter (“do hereby assign”) constitutes an immediate assignment when the invention is created in the future without the need of an additional assignment agreement. As reflected in recent Federal Circuit decisions, this difference in language can have severe consequences in determining who owns later issued patents.
For more on these decisions see this link: Analysis of Federal Court’s Ruling on Assignment Agreements in Abraxis Bioscience, Inc. v. Navinta LLC, Case No. 2009-1539 (Fed. Cir. Nov. 9, 2010) and others.
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The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.