Patent Assignments and Other Information that only Attorneys find Useful and Interesting - PowerPoint Presentation

Slide1

Patent

Assignments and Other Information that only Attorneys find Useful and Interesting

Justin R.

NifongSlide2

Disclaimer

These materials are public information and have been prepared for entertainment purposes only to contribute to the fascinating study of intellectual property law. No rights, warranties, or other guarantees are provided herein. Everyone else’s disclaimers are hereby incorporated by reference in their entirety. Slide3

Agenda

Let’s make it of record

Yo

, I own this right, right?

Divided ownership is no ownership

Let’s vacation in the Cayman IslandsSlide4

Assignments Must Be In Writing

“Applications for patent, patents, or any interests therein, shall be assignable in law by an instrument

in writing

. . . .” 35 U.S.C. § 261. Slide5

Record That

Document!

The USPTO follows a race-notice recording procedure in which a three month notice period is provided for assignment recording, otherwise the first to record is considered the superior party against a subsequent bona-fide purchaser. 35 U.S.C. §§ 261.

Federal Circuit has held that recordation of an assignment creates a rebuttable presumption that the assignment is valid.

SIRF Technology v. ITC and BroadcomSlide6

No More Fees!

The fee for recording assignments electronically with the USPTO

was eliminated

in January, 2014Slide7

What can be recorded?

Just about anything:

Assignments.

Letters disputing ownership.

License Agreements.

Notes and other security interests.

Wills.Slide8

What About Security Interests?

A recording with the USPTO is not required for perfecting a security interest in a patent and perfection is instead governed by the Uniform Commercial Code, though the USPTO provides for recording of security interests and it may be best practices to consider doing so.Slide9

Searching Assignment Records

http://assignments.uspto.gov/assignments/?db=patSlide10

Security Interest Example:Slide11

License Agreement Example:Slide12

Federal Law Applies, Right?

State law governs the application of assignment obligations***.

Minco, Inc. v. Combustion

Eng'g

, Inc

*** Feds have usurped that power in certain circumstances.Slide13

When You Assign A Patent, The Assignee Gets All Rights, Right?

The conveyance of a patent does not normally include the right to recover for injuries occurring before the conveyance.

Crown Die & Tool Co. v. Nye Tool & Mach. Works

As the Supreme Court has stated, “it is a great mistake to suppose that the assignment of a patent carries with it the right to sue for past infringement.”

Assignments must include “right to sue for past infringement language” if that right is conveyed (in most states).Slide14

Oops We Forgot the Written Agreement

Rights that exist when no written agreement:

Shop Rights

Hired-to-invent

doctrineSlide15

Shop Rights

Shop right is a common law doctrine founded in equitable principles that allows an employer to use the employee’s invention without payment to the employee if that invention was made using the employer’s time, materials, facilities, or equipment.

Lariscey

v. United States

Not assignable.

Not licensable.

May not survive sale of company.Slide16

Oops Continued-

Hired-To-Invent

You are on your own here. Goog

le is your friend. Slide17

Hired-To-Invent and Work-For-Hire are not one in the same!

Hired-to-Invent usually applies to patents, and work-for-hire usually applies to copyrights.Slide18

The Magic Language in Employment Agreements

“I will assign and do hereby assign… my right, title, and interest in each of the ideas, inventions and improvements” effected a present assignment of the inventor’s future inventions and therefore the assignee immediately acquired equitable title to the inventions.

The CAFC has addressed this many times and has endorsed this language each time!Slide19

Stanford

1

st

Assignment:“I

agree to assign or confirm in writing

to Stanford and/or Sponsors that right, title and interest in . . . such inventions”

Later Assignment: “I will assign and

do hereby assign

to CETUS, my right, title, and interest in each of the ideas, inventions and improvements.”Slide20

Families of IP assets

Courts will try to construe

assignments to

generally cover downstream applications unless language clearly excludes those downstream applications.

Same general rule applies to license agreements and downstream applications.

General

Protecht

Group, Inc. v.

Leviton

Mfg. Co.

. *** if you license a parent application, you have probably licensed any downstream applications. Slide21

Carve Out Provisions in

Agreements

Carve Out provisions exclude certain technologies from either assignments or license agreements.

CAFC has held that carve outs only applied if the particular claim in a patent was only directed to the carved out technology. If other features were included in the claim, then the Carve Out did not apply.

MHL

Tek

.Slide22

You Can Assign Individual Claims in a Patent, Right?

Example:

Patent Application issues with claims 1-10 directed towards a widget and claims 11-20 directed towards a doodad.

Claims 1-10 assigned to ABC.

Claims 11-20 assigned to XYZ.

An assignment of only certain claims in a patent is, in fact, not an assignment. This logically follows from 37 CFR 3.1, which reads “An assignment of a patent, or patent application, is the transfer to another of a party’s

entire

ownership interest.” Slide23

Let’s hold hands

Rights are severely limited when you have co-owners. No standing to sue individually and either party can grant non-exclusive licenses– creates a race to the bottom for royalty rates.Slide24

Let’s put these assets in our Cayman Island company

Can limit your ability to collect lost profits since your Cayman Island company doesn’t have profits associated with the sale of products to lose.

Also brings up standing issues.Slide25

Most Favored Nations Clause

Grants a first licensee a matching royalty if a later licensee gets a lower royalty rate.

Be careful with paid up royalties to settle litigations as this can trigger a Most Favored Nations clause.Slide26

Questions