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All Questions in Patent Process >> Employee/Inventor refuses to sign Assignment

Employee/Inventor refuses to sign Assignment

Posted by Anonymous . updated on 2/26/2009
Okay I got a company and we need to file a provisional next week. This inventor/employee, as a condition of his employment, has agreed (signed doc) to assign all IP that he creates during the course of his employment.

I was going to file an assignemnt with the provisonal and use a POA from the Company. But now this guy wants to consult a lawyer. We are running up against a hard deadline, any suggestions?  
Answers (8)
 
Isaac
Quote
How can I get an assignment recorded from an inventor who can no longer be contacted. ?The trick here is that he executed an oath and declaration, but never signed an assignment. ?


I've never done this, but while a signed form specifically transferring the application to the assignee from the inventor and signed by the inventor is the preferrable form, you can record and use other documents to prove an assignment.

I suspect (and hopefully someone with first hand experience will chime in) that a copy of the contractural obligation to assign, and a declaration from the assignee establishing among other things that the invention in question falls under the terms of the contract would be a good start towards establishing ownership.  See 37 CFR 3.73 and 3.11.

I don't know if a formal petition is required.

 
 
JimIvey
Well, I'll let my usual admonition regarding using a provisional application when you're "running up against a hard deadline" slide.  Provisional or otherwise, it's either sufficient or it's not -- filing a provisional doesn't buy you any leniency.  Okay, so I didn't let it slide.

If the application is prepared and otherwise ready for filing, I'd say it's a no-brainer to file and argue about who owns it later.  You don't need to file with an assignment.  An assignment can be executed and recorded at any time; there's no deadline.

On occasion, I've been asked by an inventor whether they should sign and about the worst-case scenario if they don't sign.  I typically advise them that I represent their employer and they should consult their own attorney and that, if they signed an employment contract in which they agree to assign all inventions, they should probably expect a lawsuit regarding breach of contract if they don't act in accordance with that contract.  I may also add that, while I'm no contract law expert, it's not inconceivable that the employer would pursue punitive damages and the inventor could be out a lot of money.  And, I always remind them again that I represent their employer and that they should seek their own legal counsel in this matter.  Most of the time, within about 5-10 minutes, my fax machine starts ringing and I get the declaration and assignment.

What I'd be curious to know is to what extent assignees have had luck in getting clear title to the patent/application without an executed assignment based solely on an employment contract with an obligation to assign.  I haven't come across that in my practice or in keeping up with IP news -- although it's state-based contract law rather than IP law, right?

Regards.
 
 
Isaac
Quote
Well, I'll let my usual admonition regarding using a provisional application when you're "running up against a hard deadline" slide. ?Provisional or otherwise, it's either sufficient or it's not -- filing a provisional doesn't buy you any leniency. ?Okay, so I didn't let it slide.

If the application is prepared and otherwise ready for filing, I'd say it's a no-brainer to file and argue about who owns it later. ?You don't need to file with an assignment. ?An assignment can be executed and recorded at any time; there's no deadline.


Filing a "non-provisional ready" provisional has the advantage in a contentious case that the inventor's signature is not required to file the thing. ? It's a possibility if buying time is important.

Quote
On occasion, I've been asked by an inventor whether they should sign and about the worst-case scenario if they don't sign. ?I typically advise them that I represent their employer and they should consult their own attorney and that, if they signed an employment contract in which they agree to assign all inventions, they should probably expect a lawsuit regarding breach of contract if they don't act in accordance with that contract. ?I may also add that, while I'm no contract law expert, it's not inconceivable that the employer would pursue punity damages and the inventor could be out a lot of money.


Typically punitive damages are not available actions for contract actions. ? However, getting fired *and* still being ordered by a court to sign over the patent rights is a distinct possibility. ? I read about a case where an ex Alcatel employee was required to work unpaid with his former employer to reduce to practice an idea conceived during the period of employment. ?He also had to pay Alcatel's costs. ?I'll bet that felt not unlike punitive damages.

Quote
What I'd be curious to know is to what extent assignees have had luck in getting clear title to the patent/application without an executed assignment based solely on an employment contract with an obligation to assign. ?I haven't come across that in my practice or in keeping up with IP news -- although it's state-based contract law rather than IP law, right?


I have occasionally had to counsel federal employees and military personal about inventorship. ?For those employees there is an executive order (I think it is No. ?10096) that covers the invention assignment issues normally handled by an employment agreement.

Other than that, I've never personally been involved in a situation where ?law operated to force an assignment where there was no employment agreement. ? I've never been in the situation where I was representing a client and was asked by one of the client's employees whether he should sign an assignment. ? Sounds very awkward.

As a cautionary tale, there is the case of Taborsky, a student at the University of South Florida who ended up serving time on a chain gang in a dispute over patent rights between himself and the university. ?Mr. Taborsky had not signed an employment agreement.
 
 
Jonathan
Quote
As a cautionary tale, there is the case of Taborsky, a student at the University of South Florida who ended up serving time on a chain gang in a dispute over patent rights between himself and the university.  Mr. Taborsky had not signed an employment agreement.


Wow! I just looked up some details of that case. It is quite compelling indeed. Looks like he was convicted of stealing laboratory notebooks.
 
 
Isaac
Quote

Wow! I just looked up some details of that case. It is quite compelling indeed. Looks like he was convicted of stealing laboratory notebooks.


If I remember the details correctly, the notebooks were purchased by Taborsky and contained only notations made by Taborsky when conducting the disputed research. ? Still, the notebooks were not supposed to leave the lab. ?I think Taborsky was convicted of stealing the trade secrets contained in the notebooks.   There may have also been a contempt of court for refusing to execute an assignment.

 
 
Bill Ri...
Check Banks v. Unisys, 00-1030 (Fed. Cir. 2000).  The Court stated:  "The general rule is that an individual owns the patent rights . . . .  There are two exceptions:  [express contract]; second, where an employee is hired to invent something or solve a particular problem."  Citing Teets v. Chormalloy [sic, Chromalloy?], 83 F.3d 403, 407 and Melin v. U.S., 478 F.2d 1210, 1213 (Ct. Cl. 1973).  The case was up on appeal from SJ that there was an implied-in-fact contract.  Court held that defendant had raised genuine issue of material fact so remanded to allow defendant to produce evidence there was no implied-in-fact contract.  State law was to provide contract principles.
 
 
M. Hamb...
Question for all the patent buffs ---

How can I get an assignment recorded from an inventor who can no longer be contacted.  The trick here is that he executed an oath and declaration, but never signed an assignment.  I also have an employment contract that states the inventor is obligated to assign the invention.  I have seen many provisions if the inventor can not be reached to sign the oath, but have not been able to find anything when they are unavailable to sign an assignment.  Any help would be appreciated.  
 
 
Bill Ri...
Is he dead? ?That would be the "easiest" to solve, it's his heir.  Of course, if he can't be found, it may be a moot point, at least for now.
 
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