Intellectual Property Assignments in Employment Contracts: Employ Creative Thinking

By Celina M. Orr

If your business employs someone for their creative or technical abilities, you should strongly consider using an intellectual property assignment.  Intellectual property assignments can be part of larger employment contracts but, at a minimum, should clearly define ownership rights in the intellectual property created by the employee.  Such assignment clauses allow the employer to retain control of a work or invention by its employees. Like all contracts, employment contracts should be carefully worded to clearly convey the intent of the parties.

While state law generally governs the interpretation of employment contracts, the Court of Appeals for the Federal Circuit recently concluded that federal law determines whether an assignment clause within an employment contract vests legal title of future inventions in the employer or is merely a promise to assign.  In DDB Technologies, LLC v. MLB Advanced Media, LP, the court held that if a contract expressly grants rights in future inventions, “no further act is required [by the employer] once an invention comes into being.”  In other words, if the contract contains language expressly assigning all rights in future inventions to the employer, then such inventions are the property of the employer by operation of law.  Conversely, if a contract provides only a promise to assign, then a separate assignment must be executed before legal title passes to the employer. Continue reading

Ding-Dong! The Witch of Patent Reform is Dead…Or is She?

By Vincent J. Allen

Many in the patent community are singing the joyous news that the Patent Reform Act of 2007 is dead.

Recent events in Congress lead to this conclusion. The departure on May 1, 2008 of the former Solicitor of the U.S. Patent and Trademark Office, John Whealan, from his temporary position with Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) is a strong indicator that patent reform legislation will not pass in 2008. Continue reading

Patent Pending: A Label with Bark & Bite

By Bobby W. Braxton

You may have noticed the phrases “patented” or “patent pending” stamped onto various products without understanding the message, power, or responsibility that each phrase carries. “Patent pending” refers to an application wherein patent protection has been sought but a patent has not yet been issued. As it may take several years, depending on the technology, before a patent issues, there can be significant lengths of time during which the owner of an invention may sell a product embodying the invention without the benefit of patent protection.

The “patent pending” label serves as notice to competitors that a patent application has been filed covering the product. Thus, while the label does not afford the rights awarded a patent owner, it does give notice to competitors that a patent could issue in the future. The “patent pending” label is often enough to deter competitors from copying an idea during the critical market development phase, even if a patent never issues. Continue reading