A postscript on the importance of employee assignments

Remember the US case of Stanford v Roche?  Judgment was handed down by the US Supreme Court on 6 June this year and there has been a chorus of comment, including by IP Draughts himself here and by the all knowing IPKat here and here.  The judgment itself is here.

You will recall that argument concerned the scope of the Bayh-Dole Act.  Stanford argued that because some of the research that led to the invention was funded by the NIH (a Federal agency), Stanford could claim rights over the invention.  But the case also considered the precise wording and effect of two different agreements.  The first agreement to be signed was between an academic and Stanford, his university employer.  It recorded that the academic “agrees to assign” his inventions to Stanford.  The second agreement to be signed was between the same academic and a pharmaceutical company (the company was Cetus which was subsequently acquired by Roche) with whom he was collaborating in research.  It stated that the academic “will assign and does hereby assign” his inventions to the company.

The Court held that the second agreement took precedence.  It was an effective and present assignment whereas the first agreement, although earlier in time, was only an incomplete agreement to assign in the future.  The invention had been assigned to Roche.  Bayh-Dole could not be said to apply.  The lesson learned was to be careful of how obligations to assign are drafted.  Avoid agreements to assign and instead actually draft an assignment.

Attending a talk given by a US attorney (Sam Webb of Stoel Rives) yesterday, I was reminded that American patent law is currently being shaken up as the Leahy-Smith America Invents Act passes into law.  Much of the Act is directed at reforming the patenting process in the US.

A good shake…

Section 4 of the Act caught my eye.  Currently, a US patent application needs to be filed by the inventor.  Section 4 changes this and permits patent applications to be filed not only by the inventor but also by “any person to whom the inventor has assigned or is obliged to assign the invention”.  A useful change because it means that US institutions have an alternative open to them where recalcitrant or unavailable inventors cannot or will not sign the necessary paperwork.

But consider that change in the light of the facts of the Stanford v Roche case.  If Section 4 had been in force, Stanford might have argued that because the earlier agreement obliged the academic to assign his inventions to Stanford, Stanford was entitled to file an application itself.  The implication being that the first agreement might have been sufficient to pass ownership to Stanford.  Which could turn the Supreme Court’s decision on its head….

Perhaps there is still hope for US universities that have employment contracts in place obliging their academic to assign inventions (in the future tense) rather than actually effecting an assignment (in the present tense)?  Of course, this is speculation and does not alter the position in the UK (or indeed in the US!).  Those of us in the UK still need to ensure that our assignments are properly drafted.  Nonetheless, it will be interesting to see if anybody in the US argues the point.

Is there a US qualified reader out there who has a view on this?

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Filed under Contract drafting, Intellectual Property, Uncategorized

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