Owners as Applicant in United States by Daniel Aleksynas

GLOBAL REFERENCE GUIDE 2012: INTELLECTUAL PROPERTY

NORTH AMERICA

Owner as applicant in the United States

by Daniel Aleksynas, The Dobrusin Law Firm PC

The general rule in the US patenting system is that all rights to a patent are conveyed to the individual inventors. Thus, in order to pursue a patent through the US patent system the inventors must sign a declaration that they are the inventor. A majority of the time inventors sign these papers without problem; however, if the declaration is not signed by the inventors then the patent application may go abandoned.

The recent changes under the America Invents Act (AIA) have simplified the law so that a corporation may stand in the place of the inventor and pursue a patent application. The new section of 35 U.S.C. § 118 states “A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the invention on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” This section replaces the former section which stated “Whenever an inventor refuses to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention. . .” Congress concurrently added 35 U.S.C. § 115(d)(2)(B) allowing assignees to file a substitute statement in lieu of executing a declaration.

The Congressional reports indicate that it was the intent of Congress to expand the rights of assignees to pursue patent applications (see e.g., 112 H. Rpt. 98, (1 June  2011); 157 Cong. Rec. S 1034, 1040 ( 1 March 2011); and 157 Cong. Rec. S 1360, 1373 (8 March 2011) “Expanding an assignee’s rights to seek broadening reissue is consistent with the bill’s changes to sections 115 and 118, which expand assignees’ rights by allowing assignees to apply for a patent against the inventor’s wishes.”

Corporations, employers, or assignees can use this change in law to ensure that their rights in inventions are protected. There are many different approaches that may be used in advance of any of these situations so that, if a problem arises, the protection of 35 U.S.C. §§ 115 and 118 can be used by the assignee to pursue a patent application:

Employee agreement. Have all current employees and all new employees sign employment agreements where the employees agree to assign any and all rights to intellectual property to the company. This agreement may also have a section requiring the employee to assist in procuring and defending any patents where the employee is named an inventor. This approach provides the broadest coverage. If current employees have not signed an employment agreement, a recent case ruled that a binding contract is formed by a current employee signing an employee agreement without any new consideration. See Preston v. Marathon Oil Co., 2011-1013,-1026, (Fed. Cir. decided 10 July 2012) (citing Preston v. Marathon Oil Co., 277 P.3d 81, 82 (Wyo. 2012)) where the Wyoming Supreme Court ruled that continued employment is “sufficient consideration for an agreement requiring assignment of intellectual property.” Please note that the laws may vary from state to state and each state’s laws should be checked before employing this approach.

Invention disclosure. Include assignment language on every invention disclosure, have the inventors describe the invention in detail, and have each inventor sign the invention disclosure in front of a witness so that when the inventors submit the invention disclosure each inventor has agreed to assign his or her rights. This approach is recommended for use in regions where signing employment agreements is not typical or is not possible.

These two examples provide the broadest protection to the assignees; however, other approaches may be used. For example, assignment language may be placed in laboratory notebooks and employees may occasionally sign the laboratory note books in the presence of a witness consenting to the assignment of these ideas. In another example, each individual’s computer may have a pop-up screen so that when an employee accesses certain documents or programs the employee is required to enter a unique code acknowledging his or her intent to assign any ideas to the assignee that are created in conjunction with the documents or programs.

Although inventor problems rarely arise, when they do they can be very costly and may delay procurement of patents that may be critical for an assignee’s success. Thus, having a procedure in place before any problems arise will enable an assignee to use the procedures recently made available under the changes of 35 U.S.C. §§ 115 and 118. Currently, the USPTO has not presented any rules that interpret these laws and no case law is currently available from the Federal Circuit Court of Appeals providing further guidance regarding the changes of law.