 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.

 Let’s make it of record  Yo, I own this right, right?  Divided ownership is no ownership  Let’s vacation in the Cayman Islands

 “Applications for patent, patents, or any interests therein, shall be assignable in law by an instrument in writing....” 35 U.S.C. § 261.

 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 Broadcom

 The fee for recording assignments electronically with the USPTO was eliminated in January, 2014

 Just about anything: Assignments. Letters disputing ownership. License Agreements. Notes and other security interests. Wills.

 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.



 State law governs the application of assignment obligations***. Minco, Inc. v. Combustion Eng'g, Inc  *** Feds have usurped that power in certain circumstances.

 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).

 Rights that exist when no written agreement:  Shop Rights  Hired-to-invent doctrine

 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.

 You are on your own here. Google is your friend.

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

 “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!

 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.”

 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.

 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.

 Example:  Patent Application issues with claims 1-10 directed towards a widget and claims directed towards a doodad.  Claims 1-10 assigned to ABC.  Claims 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.”

 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.

 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.

 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.