assignment of the patent right

29 Jan 2024

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

• Intellectual Property
• Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”). 

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent. 

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But  under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP,  implement strong hiring policies  that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an  employment agreement  that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

• Advance assignment of any IP created while employed by your company, or using your company’s resources
• An obligation to disclose any IP created while employed by your company, or using your company’s resources
• An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
• An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing  invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include  incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

• Independent contractors:  Some inventors may be self-employed, or they may be employed by one of your service providers.
• Joint collaborators:  Some inventors may be employed by, say, a subsidiary or service company instead of your company.
• Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should  also  get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

• The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
• Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you  can  execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

• Be in writing:  Oral agreements to assign patent rights are typically not enforceable in the United States
• Clearly identify all parties:  Include the names, addresses, and relationship of the assignor(s) and assignee
• Clearly identify the patent being assigned:  State the patent or patent application number, title, inventors, and filing date
• Be signed by the assignors
• Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases. 

So the patent owner (the Assignee) should should record the assignment through the  USPTO’s Assignment Recordation Branch . They can use the  Electronic Patent Assignment System (EPAS)  to file a  Recordation Cover Sheet  along with a copy of the actual patent assignment agreement.

They should submit this paperwork  within three months  of the assignment’s date. If it’s recorded electronically, the USPTO  won’t charge a recordation fee .

Need to check who owns a patent?  The USPTO website  publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a  continuation-in-part , or in a non-provisional application that adds new matter to a  provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an   employee agreement ,  company policy ,  invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation. 

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An  experienced patent professional  can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments —  contact us now  to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

Don't miss a new article. Henry Patent Law's Patent Law News + Insights blog is designed to help people like you build smart, scalable patent strategies that protect your intellectual property as your business grows. Subscribe to receive email updates every time we publish a new article — don't miss out on key tips to help your business be more successful.

Extracted from Law360

Parties seeking to transfer ownership of a patent subject to preexisting licenses often face a difficult task.

On the one hand, the patent owner may desire to obtain the benefits of those prior licenses even after the patent is assigned to a new owner.

On the other, any rights retained by the patent owner, and any restrictions placed on the future assignee, may jeopardize the standing of the assignee to enforce the patent without joining the former owner.

To further complicate this delicate balance, the U.S. Court of Appeals for the Federal Circuit's decision in Lone Star Silicon Innovations LLC v. United Microelectronics Corp., and subsequent district court cases applying that decision, have looked to the totality of the contract at issue to determine whether the assignee has standing, subjecting any contractual restrictions on the assignees' rights to further scrutiny.

It is therefore useful to determine which encumbrances must be contractually imposed (and subjected to additional scrutiny) and which are automatically transferred to the assignee when it steps into the shoes of the assignor. It is well-settled that an assignee takes a patent subject to any preexisting encumbrances that run with the patent. But what does it mean to run with the patent? And how should an assignor ensure that future transferees are bound by those provisions?

An Overview of What Runs With the Patent

  Patents are, by definition, the right to exclude others from using an invention. When the patent owner has given up the right to exclude another entity through the grant of a license or covenant not to sue, it cannot then transfer that right to exclude to another party. This is true regardless of whether the assignee is aware of the prior actions by the patent owner. In other words, a patent owner cannot assign more rights than it possesses.

The patent owner may also have contractual obligations, or even incentives, to protect those prior license grants. Consequently, it may want to shield the earlier licensees by reserving rights for itself, or imposing restrictions on future purchasers.

This dilemma is further complicated by standing considerations. Courts across the country have grappled with what rights a licensee must possess to have standing to sue for patent infringement. The generally accepted principle is that the licensee must have all substantial rights to sue in its own name.[1] Courts look at the totality of the agreement, i.e., all provisions and their cumulative effect on substantial rights. Courts tend to focus, however, on restrictions that impair enforcement and alienation.

Thus, particular care should be taken when imposing contractual limitations on an assignee's ability to enforce the patent or further transfer the rights it obtains. The line between a preexisting encumbrance that runs with the patent and a substantial right retained by the former patent owner is often difficult to ascertain.

In the recent Lone Star case, the Federal Circuit considered an agreement that restricted assignee Lone Star's ability to enforce or assign the patents without consent of the patent owner, and it further restricted Lone Star's ability to transfer the patents unless the subsequent buyer agreed to be bound by the same restrictions as Lone Star. The court concluded that, when viewed in the totality, Lone Star lacked all substantial rights and thus had standing to sue only if it joined the original patent owner.

Since the Lone Star decision, district courts have examined contractual restrictions to determine whether transferees had all substantial rights necessary to maintain suit without joining the respective patent owners. For example, following Lone Star, district courts have refused to allow an assignee to sue in its own name where the assignee was required to obtain consent prior to filing suite against two specific entities.[2]

As a result of the uncertainty surrounding standing to sue when preexisting rights exist, patent owners looking to assign future rights are wise to consider which rights and obligations automatically transfer and which ones must be contractually imposed.

And for any encumbrances that are imposed contractually, the impact on the assignee's standing to sue should be assessed. Ultimately, patent owners need to assess the relative risks of protecting their existing licensing arrangements against the possibility that doing so will result in the loss of the assignor's independent standing to sue.

Encumbrances That Run With the Patent

  As a general rule, only those encumbrances that relate to the actual use of the patent are deemed to run with that right to exclude. The most common encumbrances of this type are those that restrict the ability to use an invention, including explicit licenses authorizing use, and covenants not to sue to enforce a patent right. Once granted, the patent owner's exclusionary rights against the receiving party are diminished. A subsequent assignee then takes a patent subject to those existing licenses and covenants not to sue.[3]

But the term license in this context can be misleading. Most patent license agreements contain not only provisions granting rights to use the patent at issue but also other provisions governing payment (through running royalties or lump sums), dispute resolution, confidentiality and many other issues. A common misperception is that the entire license runs with the patent and therefore binds subsequent assignees, but sellers — and buyers — should beware.

In contrast to license grants and covenants not to sue that impact use of an invention and run with the patent, procedural terms in a licensing agreement that do not directly impact the use of the patent may not be binding on subsequent buyers. Yet the outcome of such provisions is often unclear.

Arbitration Clauses

The Federal Circuit has held that arbitration clauses do not run with the patent because they are unrelated to the actual use of the patent.[4] Instead, these provisions are viewed as features of the underlying contract negotiated by the original parties that do not bind any subsequent patent owner unless that restriction is imposed as part of the contractual patent assignment.

Confidentiality Provisions

Patent license agreements often contain contractual obligations to keep terms of the agreement confidential. Courts have classified confidentiality provisions as procedural terms that do not bind subsequent assignees.[5] Like arbitration clauses, confidentiality provisions relate to the contractual obligations between the negotiating parties, rather than the patent itself, and again generally do not run with the patent upon transfer.

Licenses to use a patent are often directly conditioned on royalty payments for that use. Similarly, patent assignments sometimes require payment of royalties to the original patent owner for future enforcement actions brought by the assignee. While royalty rights may seem to run with the patent — as the commercial benefit of the grant of a right to use the patented invention — some courts have found they do not.[6] These courts have reasoned that the royalty payments are personal between the contracting parties and thus do not bind future assignees.

This outcome is particularly concerning if a patent is assigned to a party in return for a share of future royalties earned by the new patent owner. If that new patent owner subsequently assigns the patent to a third party, the original owner may not have any recourse against that third party to enforce its royalty rights absent a separate contractual arrangement that binds the future assignee.

Not all courts have reached the same conclusion, however. At least one court has distinguished between past royalties, which are not transferred, and future royalties, which are transferred.[7] The court explained that the assignee of a patent becomes vested with the rights of the patentee, but also takes the patent subject to the patentee's previous acts. Under this view, royalties due after the transfer are incident to and transferred with the patent absent an express reservation.

That presumption is reversed with previously accrued royalties though. The right to recover prior royalties or damages for prior infringement may be assigned, but the assignment of a patent without more is not sufficient to confer those rights on the assignee.

Practice Recommendations

Only those encumbrances deemed to run with the patent — those that relate to the actual use of the patent — are likely to bind successors in interest. Potential buyers should perform due diligence on the patents to determine whether the patents are subject to any preexisting licenses or covenants not to sue. Even if the patent owner does not inform the potential buyer of such commitments, they will likely bind the buyer after transfer.

To the extent a patent owner wants (or is contractually obligated) to ensure that existing encumbrances continue to bind future assignees of the patent, it should make sure that all restrictions not specifically tied to the use of the patent are contractually imposed on future assignees.

Such provisions preserve the patent owner's breach of contract rights against the original licensee should that licensee transfer the agreement without the obligations it was required to include. Care should be taken, however, to ensure that any contractual restrictions do not result in the retention of a substantial right that impedes the assignees' standing to sue future infringers.

[1] Lone Star Silicon Innovations LLC v. United Microelectronics Corp. , UMC Grp. (USA), 925 F.3d 1225 (Fed. Cir. 2019).

[2] Home Semiconductor Corp. v. Samsung Elecs. Co., Ltd. , No. 13-cv-2033, 2020 WL 1470867 (D. Del. Mar. 26, 2020).

[3] Innovus Prime, LLC v. Panasonic Corp. , No. C-12-00660, 2013 WL 3354390 (N.D. Cal. July 2, 2013).

[4] Datatreasury Corp. v. Wells Fargo & Co. , 522 F.3d 1368, 1372-73 (Fed. Cir. 2008).

[5] Paice, LLC v. Hyundai Motor Co. , No. 12-499, 2014 WL 3533667, at *9-10 (D. Md. July 11, 2014).

[6] In re Particle Drilling Techs., Inc. , No. 09-33744, 2009 WL 2382030 (S.D. Tex. July 29, 2009); Jones v. Cooper Indus., Inc. , 938 S.W.2d 118 (14th Dist. Tex. 1996).

[7] In re Novon Int'l, Inc. v. Novamont S.P.A. , Nos. 98-cv-677E(F), 96-BK-15463B, 2000 WL 432848, at *5 (W.D.N.Y. Mar. 31, 2000).

• General Publications October 5, 2020 “What Ethernet Patent Ruling Means for Claim Amendments,” Law360 , October 5, 2020. Continuation practice is as popular as ever at the U.S. Patent and Trademark Office. This is due, at least in part, to the potential for patent challenges before the Patent Trial and Appeal Board (PTAB). This article examines the considerations for both patent owner and challenger for continuation applications stemming from PTAB patent challenges.
• Patent Case Summaries June 4, 2019 Patent Case Summaries | Week Ending May 31, 2019 A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
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This patent assignment is between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ").

The Assignor has full right and title to the patents and patent applications listed in Exhibit A (collectively, the " Patents ").

The Assignor wishes to transfer to the Assignee, and the Assignee wishes to purchase and receive from the Assignor, all of its interest in the Patents.

The parties therefore agree as follows:

1. ASSIGNMENT OF PATENTS.

The Assignor assigns to the Assignee, and the Assignee accepts the assignment of, all of the Assignor's interest in the following in the United States and its territories and throughout the world:

• (a) the Patents listed in Exhibit A ;
• (b) the patent claims, all rights to prepare derivative works, goodwill, and other rights to the Patents;
• (c) all registrations, applications (including any divisions, continuations, continuations-in-part, and reissues of those applications), corresponding domestic and foreign applications, letters patents, or similar legal protections issuing on the Patents, and all rights and benefits under any applicable treaty or convention;
• (d) all income, royalties, and damages payable to the Assignor with respect to the Patents, including damages and payments for past or future infringements of the Patents; and
• (e) all rights to sue for past, present, and future infringements of the Patents.

2. CONSIDERATION.

The Assignee shall pay the Assignor a flat fee of as full payment for all rights granted under this agreement. The Assignee shall complete this payment no later than .

3. RECORDATION.

In order to record this assignment with the United States Patent and Trademark Office and foreign patent offices, within hours of the effective date of this assignment, the parties shall sign the form of patent assignment agreement attached as Exhibit B . The Assignor Assignee is solely responsible for filing the assignment and paying any associated fees of the transfer.

4. NO EARLY ASSIGNMENT.

The Assignee shall not assign or otherwise encumber its interest in the Patents or any associated registrations until it has paid to the Assignor the full consideration provided for in this assignment. Any assignment or encumbrance contrary to this provision shall be void.

5. ASSISTANCE.

• (1) sign any additional papers, including any separate assignments of the Patents, necessary to record the assignment in the United States;
• (2) do all other lawful acts reasonable and necessary to record the assignment in the United States; and
• (3) sign all lawful papers necessary for Assignee to retain a patent on the Patents or on any continuing or reissue applications of those Patents.
• (b) Agency. If for any reason the Assignee is unable to obtain the assistance of the Assignor, the Assignor hereby appoints the Assignee as the Assignor's agent to act on behalf of the Assignor to take any of the steps listed in subsection (a).

6. NO LICENSE.

After the effective date of this agreement, the Assignor shall make no further use of the Patents or any patent equivalent, except as authorized by the prior written consent of the Assignee. The Assignor shall not challenge the Assignee's use or ownership, or the validity, of the Patents.

7. ASSIGNOR'S REPRESENTATIONS.

The Assignor hereby represents to the Assignee that it:

• (a) is the sole owner of all interest in the Patents;
• (b) has not transferred, exclusively licensed, or encumbered the Patents or agreed to do so;
• (c) is not aware of any violation or infringement of any third party's rights (or a claim of a violation or infringement) by the Patents;
• (d) is not aware of any third-party consents, assignments, or licenses that are necessary to perform under this assignment;
• (e) was not acting within the scope of employment of any third party when conceiving, creating, or otherwise performing any activity with respect to the Patents.

The Assignor shall immediately notify the Assignee in writing if any facts or circumstances arise that would make any of the representations in this assignment inaccurate. 

8. INDEMNIFICATION.

The Assignor shall indemnify the Assignee against:

• (a) any claim by a third party that the Patents or their creation, use, exploitation, assignment, importation, or sale infringes on any patent or other intellectual property;
• (b) any claim by a third party that this assignment conflicts with, violates, or breaches any contract, assignment, license, sublicense, security interest, encumbrance, or other obligation to which the Assignor is a party or of which it has knowledge;
• (c) any claim relating to any past, present, or future use, licensing, sublicensing, distribution, marketing, disclosure, or commercialization of any of the Patents by the Assignor; and
• (d) any litigation, arbitration, judgments, awards, attorneys' fees, liabilities, settlements, damages, losses, and expenses relating to or arising from (a), (b), or (c) above.
• (i) the Assignee promptly notifies the Assignor of that claim;
• (ii) the Assignor controls the defense and settlement of that claim;
• (iii) the Assignee fully cooperates with the Assignor in connection with its defense and settlement of that claim;
• (iv) the Assignee stops all creation, public use, exploitation, importation, distribution, or sales of or relating to the infringing Patents, if requested by the Assignor.
• (i) obtain the right for the Assignee to continue to use the infringing Patent;
• (ii) modify the infringing Patent to eliminate the infringement;
• (iii) provide a substitute noninfringing patent to the Assignee pursuant to this assignment; or
• (iv) refund to the Assignee the amount paid under this assignment for the infringing Patent.
• (c) No Other Obligations. The Assignor shall have no other obligations or liability if infringement occurs, and shall have no other obligation of indemnification or to defend relating to infringement. The Assignor shall not be liable for any costs or expenses incurred without its prior written authorization and shall have no obligation of indemnification or any liability if the infringement is based on (i) any modified form of the Patents not made by the Assignor, (ii) any finding or ruling after the effective date of this assignment, or (iii) the laws of any country other than the United States of America or its states.

9. GOVERNING LAW.

• (a) Choice of Law. The laws of the state of  govern this agreement (without giving effect to its conflicts of law principles).
• (b) Choice of Forum. Both parties consent to the personal jurisdiction of the state and federal courts in County, .

10. AMENDMENTS.

No amendment to this assignment will be effective unless it is in writing and signed by a party or its authorized representative.

11. ASSIGNMENT AND DELEGATION.

• (a) No Assignment. Neither party may assign any of its rights under this assignment, except with the prior written consent of the other party. All voluntary assignments of rights are limited by this subsection.
• (b) No Delegation. Neither party may delegate any performance under this assignment, except with the prior written consent of the other party.
• (c) Enforceability of an Assignment or Delegation. If a purported assignment or purported delegation is made in violation of this section, it is void.

12. COUNTERPARTS; ELECTRONIC SIGNATURES.

• (a) Counterparts. The parties may execute this assignment in any number of counterparts, each of which is an original but all of which constitute one and the same instrument.
• (b) Electronic Signatures. This assignment, agreements ancillary to this assignment, and related documents entered into in connection with this assignment are signed when a party's signature is delivered by facsimile, email, or other electronic medium. These signatures must be treated in all respects as having the same force and effect as original signatures.

13. SEVERABILITY.

If any one or more of the provisions contained in this assignment is, for any reason, held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or unenforceability will not affect any other provisions of this assignment, but this assignment will be construed as if those invalid, illegal, or unenforceable provisions had never been contained in it, unless the deletion of those provisions would result in such a material change so as to cause completion of the transactions contemplated by this assignment to be unreasonable.

14. NOTICES.

• (a) Writing; Permitted Delivery Methods. Each party giving or making any notice, request, demand, or other communication required or permitted by this assignment shall give that notice in writing and use one of the following types of delivery, each of which is a writing for purposes of this assignment: personal delivery, mail (registered or certified mail, postage prepaid, return-receipt requested), nationally recognized overnight courier (fees prepaid), facsimile, or email.
• (b) Addresses. A party shall address notices under this section to a party at the following addresses:
• If to the Assignor: 

• If to the Assignee: 
• (c) Effectiveness. A notice is effective only if the party giving notice complies with subsections (a) and (b) and if the recipient receives the notice.

15. WAIVER.

No waiver of a breach, failure of any condition, or any right or remedy contained in or granted by the provisions of this assignment will be effective unless it is in writing and signed by the party waiving the breach, failure, right, or remedy. No waiver of any breach, failure, right, or remedy will be deemed a waiver of any other breach, failure, right, or remedy, whether or not similar, and no waiver will constitute a continuing waiver, unless the writing so specifies.

16. ENTIRE AGREEMENT.

This assignment constitutes the final agreement of the parties. It is the complete and exclusive expression of the parties' agreement about the subject matter of this assignment. All prior and contemporaneous communications, negotiations, and agreements between the parties relating to the subject matter of this assignment are expressly merged into and superseded by this assignment. The provisions of this assignment may not be explained, supplemented, or qualified by evidence of trade usage or a prior course of dealings. Neither party was induced to enter this assignment by, and neither party is relying on, any statement, representation, warranty, or agreement of the other party except those set forth expressly in this assignment. Except as set forth expressly in this assignment, there are no conditions precedent to this assignment's effectiveness.

17. HEADINGS.

The descriptive headings of the sections and subsections of this assignment are for convenience only, and do not affect this assignment's construction or interpretation.

18. EFFECTIVENESS.

This assignment will become effective when all parties have signed it. The date this assignment is signed by the last party to sign it (as indicated by the date associated with that party's signature) will be deemed the date of this assignment.

19. NECESSARY ACTS; FURTHER ASSURANCES.

Each party shall use all reasonable efforts to take, or cause to be taken, all actions necessary or desirable to consummate and make effective the transactions this assignment contemplates or to evidence or carry out the intent and purposes of this assignment.

[SIGNATURE PAGE FOLLOWS]

Each party is signing this agreement on the date stated opposite that party's signature. 

[PAGE BREAK HERE]

EXHIBIT A PATENTS AND APPLICATIONS

FORM OF RECORDABLE PATENT APPLICATION ASSIGNMENT

For good and valuable consideration, the receipt of which is hereby acknowledged, between  , an individual a(n) (the " Assignor ") and  , an individual a(n) (the " Assignee ") all of the Assignor's interest in the Assigned Patents identified in Attachment A to this assignment, and the Assignee accepts this assignment.

Each party is signing this agreement on the date stated opposite that party's signature.

ATTACHMENT A ASSIGNED PATENTS

Free Patent Assignment Template

Simplify the process of transferring patent rights for both buyers and sellers with a patent assignment agreement. document the ownership transfer clearly and efficiently..

Complete your document with ease

How-to guides, articles, and any other content appearing on this page are for informational purposes only, do not constitute legal advice, and are no substitute for the advice of an attorney.

Patent assignment: How-to guide

A company’s ability to buy and sell property is essential for its long-term life and vitality. Although it doesn’t take up physical space, too much intellectual property can burden a company, directing limited funds towards maintaining registrations, defending against third-party claims, or creating and marketing a final product. 

Selling unused or surplus intellectual property can have an immediate positive effect on a company’s finances, generating revenue and decreasing costs. When it does come time to grow a business, companies looking to purchase property (including patents and other inventions) to support their growth must be sure that the seller does have title to the desired items. A properly drafted patent assignment can help in these circumstances.

A patent assignment is the transfer of an owner’s property rights in a given patent or patents and any patent applications. These transfers may occur independently or as part of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.

This agreement is a written acknowledgment of the rights and responsibilities being transferred as part of your sale. This will provide essential documentation of ownership and liability obligations, and you will be well on your way to establishing a clear record of title for all of your patents. 

Important points to consider while drafting patent assignments

What is a patent.

A patent is a set of exclusive rights on an invention given by the government to the inventor for a limited period. Essentially, in exchange for the inventor’s agreement to make their invention public and allow others to examine and build on it, the government provides the inventor with a short-term monopoly on their creation. In other words, only they can make, use, or sell that invention.

Are licenses and assignments different from each other?

Licenses are different from assignments. The individual who receives license rights from the patent holder isn’t gaining ownership. Rather, they’re getting assurance from the patent holder that they won’t be sued for making, using, or selling the invention. The terms of the license will vary from agreement to agreement and may address issues of royalties, production, or reversion. 

What are the different kinds of patent assignments?

A  patent assignment can take many forms. 

• It can be the transfer of an individual’s entire interest to another individual or company. 
• It can also transfer a specific part of that interest (e.g., half interest, quarter interest, etc.) or a transfer valid only in a designated country area. The exact form of the transfer is specific to the parties' agreement.

What is the role of the United States Patent and Trademark Office in patent transfer?

A patent transfer is usually accomplished through a contract, like the following written agreement form. However, after the parties have negotiated and signed their agreement, the transfer must be recorded with the  U.S. Patent and Trademark Office (USPTO) . The agreement will only be effective if this registration is made. Moreover, if the transfer isn’t recorded within three months from the date of the assignment, there can be no later purchasers. In other words, such patents are no longer sellable to a third party by the assignee if it isn’t recorded quickly and correctly.

Note that there is a fee for  recording each assignment of a patent or patent application.

What details should I add to my patent application?

Although you can adapt the document to suit your arrangement, you should always identify the patent(s) being assigned by their USPTO number and date and include the name of the inventor and the invention’s title (as stated in the patent itself). This is a requirement of federal law, and failure to follow it could invalidate your assignment.

What are the benefits of patent assignment?

The advantage of selling your invention or patent outright (and not simply licensing or attempting to develop and market it yourself) is that you’re guaranteed payment at the price you and the purchaser have negotiated. 

On the other hand, that one-time payment is all that you will ever receive for your property. You will no longer have the right to control anyone else’s use of your creation. 

By using it yourself or offering a temporary license, you retain the potential for future income. However, such income isn’t certain, and your opportunities are paralleled by risk. 

Before selling all of your rights in a patent or patent application, ensure this is the best (and most lucrative) approach for you and your company.

Is it necessary to do due diligence before buying a patent?

Provide valuable consideration to due diligence, and don’t agree without completing it. If you purchase a patent,  conduct searches with the patent office on the patents issued and online directories to ensure the seller has complete and unique rights in the offered property. Look for these:

• Has an application already been filed by another person or company? 
• What are the chances that this is a patentable item? 

Although your findings won’t be guaranteed, you may be protected as an “innocent purchaser” if disputes arise. 

You might also find critical information about the value of the patent. Consider hiring a patent attorney to help in your investigation. Comparing patents and applications often requires a specialized and technical understanding to know how useful and unique each one is.

What should I consider while selling a patent?

If you sell an invention or patent, ensure you own it. Although this may seem obvious, intellectual property ownership sometimes must be clarified. This may be the case if, for example, the invention was created as part of your employment or if it was sold or otherwise transferred to somebody else. A thorough search of the USPTO website for the publication number should be conducted before you attempt to sell your property.

Is reviewing and signing the patent necessary? 

Review the assignment carefully to ensure all relevant deal points are included. Don't assume certain terms are agreed upon if not stated in the document.

Once the document is ready, sign two copies of the assignment, one for you and one for the other party.

Get the assignment notarized by the notary public to reduce the challenges to the validity of a party’s signature or the transfer itself.

If you’re dealing with a  complex agreement for a patent assignment , contact an attorney to help draft an assignment that meets your needs. 

Key components to include in patent assignments 

The following provisions will help you understand the terms of your assignment. Please review the entire document before starting your step-by-step process. 

Introduction of parties

This section identifies the document as a patent assignment. Add the assignment effective date, parties involved, and what type of organization(s) they are. The “assignor” is the party giving their ownership interest, and the “assignee” is the party receiving it.

The “whereas” clauses, or recitals, define the world of the assignment and offer key background information about the parties. In this agreement, the recitals include a simple statement of the intent to transfer rights in the patent. Remember that the assignor can transfer all or part of its interest in the patents. 

Assignment of patents

This section constitutes the assignment and acceptance of patents and inventions. Be as complete and clear as possible in your description of the property being transferred.

Consideration

In most agreements, each party is expected to do something. This obligation may be to perform a service, transfer ownership of property, or pay money. In this case, the assignee gives money (sometimes called “consideration”) to receive the assignor’s property. Enter the amount to be paid, and indicate how long the assignee has to make that payment after the agreement is signed.

Authorization to a director

This section is the assignor’s authorization to issue patents in the assignee’s name. In other words, this tells the head of the patent and trademark office that the transfer is valid and that ownership is changing hands by the assignment.

If the assignment is being recorded after the USPTO has issued a patent number, add the patent application number here.

Assignor’s representations and warranties

In this section, the assignor is agreeing to the following terms:

• They’re the sole owner of the inventions and the patents. If there are other owners who aren’t transferring their interests, this means that the only part being transferred is the assignor’s part.
• They haven’t sold or transferred the inventions and the patents to any third party.
• They have the authority to enter the agreement.
• They don’t believe that the inventions and the patents have been taken from any third party without authorization (e.g., a knowing copy of another company’s invention).
• They don’t know if any permissions must be obtained for the assignment to be completed. In other words, once the agreement is signed, the assignment will be effective without anyone else’s input.
• The patents weren’t created while a third party employed the creator. In many cases, if a company employs an individual and comes up with a product, the company will own that product. This section offers assurance to the assignee that there are no companies that will make that claim about the patents being sold.

If you and the other party want to include additional representations and warranties, you can do so here. 

Assignee’s representations and warranties

In this section, the assignee is agreeing to the following terms:

• They have the authority to enter into the agreement
• They have enough funds to pay for the assignment 

No early assignment

This section prevents the assignee from re-transferring the inventions or patents or using any of them as collateral for loans until it has completely paid the money due under the agreement. 

Documentation

This clause is the assignor’s promise to help with any paperwork needed to complete an assignment, such as filing information about the assignment with the USPTO, transferring document titles, transferring paperwork for filing to foreign countries, etc. 

No further use of inventions or patents

This section indicates that after the agreement’s filing date, the assignor will stop using all the inventions and patents being transferred and won’t challenge the assignee’s use of those inventions or patents.

Indemnification

This clause describes each party’s future obligations if the patent or any application is found to infringe on a third party’s rights. Either the assignor agrees to take all responsibility for infringement, promising to pay all expenses and costs relating to the claim, or the assignor makes its responsibilities conditional, significantly limiting its obligations if a claim is brought. 

Successors and assigns

This section states that the parties’ rights and obligations will be passed on to successor organizations (if any) or organizations to which rights and obligations have been permissibly assigned.

No implied waiver

This clause explains that even if one party allows the other to ignore or break an obligation under the agreement, it doesn’t mean that the party waives any future rights to require the other to fulfill those (or any other) obligations.

Provide the assignor and assignee’s address where all the official or legal correspondence should be delivered.

Governing law

This provision lets the parties choose the state laws used to interpret the document. 

Counterparts; electronic signatures

This section explains that if the parties sign the agreement in different locations, physically or electronically, all the separate pieces will be considered part of the same agreement. 

Severability

This clause protects the terms of the agreement as a whole, even if one part is later invalidated. For example, if a state law is passed prohibiting choice-of-law clauses, it won’t undo the entire agreement. Instead, only the section dealing with the choice of law would be invalidated, leaving the remainder of the assignment enforceable.

Entire agreement

This section indicates the parties’ agreement that the document they’re signing is “the agreement” about transferring the issued patent. 

This clarifies that the headings at the beginning of each section are meant to organize the document and shouldn’t be considered operational parts of the note .  

Frequently asked questions

What is a patent assignment .

If you want to buy patents, the first step is to ensure the seller (original owner) owns the patent rights. The second step is the transfer of the patent owner's rights to the buyer. Patent assignments are agreements that cover both steps, helping the buyer and the seller with ownership records and quickly enabling transfer.

What are the requirements for patent assignment?

Here's the information you'll require to complete a patent assignment:

• Who the assignor is : Have their name and contact information ready
• Who the assignee is : Have their information available
• Invention info :  Know the inventor's name, invention's registration number, and filing date

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• > Intellectual Property Licensing and Transactions
• > Ownership and Assignment of Intellectual Property

Book contents

• Intellectual Property Licensing and Transactions
• Copyright page
• Acknowledgments
• Introduction
• Part I Introduction to Intellectual Property Licensing
• 1 The Business of Licensing
• 2 Ownership and Assignment of Intellectual Property
• 3 The Nature of an Intellectual Property License
• 4 Implied Licenses and Unwritten Transactions
• 5 Confidentiality and Pre-license Negotiations
• Part II License Building Blocks
• Part III Industry- and Context-Specific Licensing Topics
• Part IV Advanced Licensing Topics

2 - Ownership and Assignment of Intellectual Property

from Part I - Introduction to Intellectual Property Licensing

Published online by Cambridge University Press:  21 June 2022

Chapter 2 covers issues surrounding the assignment of IP (i.e., fixing its ownership as a prerequisite to transacting in it), and contrasts ownership with licensing of IP. It specifically covers the assignment of rights in patents, copyrights, trademarks and trade secrets, including within the employment context (i.e., shop rights , individuals hired to invent and works made for hire). The Supreme Court decision in Stanford v. Roche is considered at length. The chapter concludes with a thorough discussion of the issues presented by joint ownership of IP.

Summary Contents

2.1 Assignments of Intellectual Property, Generally 19

2.2 Assignment of Copyrights and the Work Made for Hire Doctrine 22

2.3 Assignment of Patent Rights 27

2.4 Trademark Assignments and Goodwill 37

2.5 Assignment of Trade Secrets 41

2.6 Joint Ownership 42

The owner of an intellectual property (IP) right, whether a patent, copyright, trademark, trade secret or other right, has the exclusive right to exploit that right. Ownership of an IP right is thus the most effective and potent means for utilizing that right. But what does it mean to “own” an IP right and how does a person – an individual or a firm – acquire ownership of it? This chapter explores transfers and assignments of IP ownership, first in general, and then with respect to special considerations pertinent to patents, copyrights and trademarks. Assignments and transfers of IP licenses , another important topic, are covered in Section 13.3 , and attempts to prohibit an assignor of IP from later challenging the validity of transferred IP (through a contractual no-challenge clause or the common law doctrine of “assignor estoppel”) are covered in Chapter 22 .

2.1 Assignments of Intellectual Property, Generally

Once it is in existence, an item of IP may be bought, sold, transferred and assigned much as any other form of property. Like real and personal property, IP can be conveyed through contract, bankruptcy sale, will or intestate succession, and can change hands through any number of corporate transactions such as mergers, asset sales, spinoffs and stock sales.

The following case illustrates how IP rights will be treated by the courts much as any other assets transferred among parties. In this case, the court must interpret a “bill of sale,” the document listing assets conveyed in a particular transaction. Just as with bushels of grain or tons of steel, particular IP rights can be listed in a bill of sale and the manner in which they are listed will determine what the buyer receives.

Systems Unlimited v. Cisco Systems

228 fed. appx. 854 (11th cir. 2007) (cert. denied).

Following the settlement of a dispute between Systems Unlimited, Inc. and Cisco Systems, Inc. over the ownership of certain intellectual property, Cisco agreed to covey the property to Systems. In the resulting bill of sale, Cisco:

granted, bargained, sold, transferred and delivered, and by these presents does grant, bargain, sell, transfer and deliver unto [Systems], its successor and assigns, the following:

Any and all of [Cisco]’s right, title and interest in any copyrights, patents, trademarks, trade secrets and other intellectual property of any kind associated with any software, code or data, including without limitation host controller software and billing software, whether embedded or in any other form (including without limitations, disks, CDs and magnetic tapes), and including any and all available copies thereof and any and all books and records related thereto by [Cisco]

Cisco never delivered [copies of] any of the software to Systems. Alleging that it had been damaged by the non-delivery, Systems sued Cisco for breaching the bill of sale contract and for violating the attendant obligations to deliver the software under the Uniform Commercial Code.

Systems contends that the district court erred in granting summary judgment in favor of Cisco because: (1) the plain language of the bill of sale required Cisco to deliver the software; (2) the bill of sale, when read in conjunction with other contemporaneous agreements, required delivery; and (3) the UCC, which governs the bill of sale, requires that all goods be delivered at a reasonable time. Systems is wrong on each point.

The bill of sale is interpreted in accord with its plain language absent some ambiguity. Here, the parties agree that the bill of sale is clear and unambiguous.

The bill of sale provides that Cisco will “grant, bargain, sell, transfer and deliver unto [Systems] … [a]ny and all of [Cisco]’s right, title and interest in any copyrights, patents, trademarks, trade secrets and other intellectual property of a kind associated with any software, code or data.” As the district court explained, this language unambiguously means that Cisco was required by the bill of sale to transfer to Systems all of its rights in intellectual property associated with certain software and data. There is no mention in the plain language of the contract itself of Cisco being obligated to transfer the actual software, and we will not imply any such obligation absent some good reason under law.

Systems says there are two good reasons to imply an obligation by Cisco to transfer the software. First, Systems argues that the bill of sale must be interpreted in conjunction with the settlement agreement between Systems and Cisco and other documents relating to the intellectual property. These other agreements, Systems claims, include an obligation by Cisco to deliver the software with any conveyance of intellectual property.

Assuming without deciding that the other agreements include language requiring Cisco to deliver the software, they are not relevant here because Systems has never alleged Cisco violated these other agreements. Systems’ complaint alleges only a violation of the bill of sale contract, and there is no obligation in that contract to deliver the software. The bill of sale does not reference or incorporate any other agreement.

To get around this point, Systems argues that “when instruments relate to the same matters, are between the same parties, and made part of substantially one transaction, they are to be taken together.” It is true that this is one of the canons for construing a contract under California law. But it is also true that this canon, as with most others, is inapplicable where the contract that is alleged to have been breached is unambiguous. Here, the language of the bill of sale is unambiguous. Thus, there is no need to apply any canons of construction.

Systems also argues that the UCC imposes a duty on Cisco to deliver the software. We will assume without deciding that Systems’ reading of the UCC is correct. Even so, the provisions of the UCC only apply to contracts that deal predominately with “transactions in goods.” The sale of intellectual property, which is what is involved here, is not a transaction in goods. Thus, the UCC does not apply. Accordingly, the plain language of the bill of sale governs and, as the district court held, it does not include a provision requiring Cisco to deliver any software.

Notes and Questions

1. IP and the UCC . The court in Systems v. Cisco holds that IP licenses and other transactions are not governed by Article 2 of the UCC, which pertains to sales of goods. In Section 3.4 we will discuss whether and to what degree Article 2 applies to IP licenses . But this case relates not to a license, but to a “sale” of software. Why doesn’t UCC Article 2 apply? Should it?

2. Delivery of what ? What does this language from the bill of sale refer to, if not delivery of software: “including any and all available copies thereof”? Does this language represent a drafting mistake by Systems’ attorney? Or an intentional omission by Cisco?

3. The need for software . Why is Systems so upset that Cisco has allegedly refused to deliver the software in question? How useful is an assignment of copyright and other IP to someone who is not in possession of the software code that is copyrighted? Has Cisco “pulled a fast one” on Systems and the court, or is there a valid business reason that could justify Cisco’s failure to deliver the software ?

4. Statute of frauds . Assignments of copyrights, patents and trademarks must all be in writing (17 U.S.C. § 204(a), 35 U.S.C. § 261, 15 U.S.C. § 1060(3)). Why? This requirement does not apply to most licenses, which may be oral. Can you think of a good reason for this distinction?

5. State law and mutual mistake . Despite the federal statutory nature of patents, courts have long held that the question of who holds title to a patent is a matter of state contract law. Footnote 1 This issue arose in an interesting way in Schwendimann v. Arkwright Advanced Coating, Inc ., 959 F.3d 1065 (Fed. Cir. 2020). In Schwendimann , the plaintiff’s former company purported to assign her a patent application in 2003. Due to a clerical error by the law firm handling the matter, the assignment document filed with the patent office listed the wrong patent name and number. In 2011, the plaintiff filed an action asserting the patent against an alleged infringer. The defendant, discovering the incorrect assignment document from 2003, moved to dismiss on the ground that the plaintiff did not hold any enforceable rights at the time she filed suit and thus lacked standing. The district court, interpreting applicable state law, held that the 2003 assignment was the result of a “mutual mistake of fact” that did not accurately reflect the intent of the parties. Accordingly, the erroneous document could be reformed and was sufficient to support standing to bring suit. The Federal Circuit affirmed. Judge Reyna dissented, reasoning that, irrespective of the district court’s later reformation of the erroneous assignment, the plaintiff’s failure to own the patent at the time her suit was filed necessarily barred her suit under Article III of the Constitution. Which of these positions do you find more persuasive? Notwithstanding the holding in favor of the plaintiff, is there a claim for legal malpractice against the law firm in question ?

2.2 Assignment of Copyrights and the Work Made for Hire Doctrine

Under § 201(a) of the Copyright Act, copyright ownership “vests initially in the author or authors of the work.” A copyright owner may assign any of its exclusive rights, in full or in part, to a third party. The assignment generally must be in writing and signed by the owner of the copyright or his or her authorized agent (17 U.S.C. § 204(a)).

If a work of authorship is prepared by an employee within the scope of his or her employment, then the work is a “work made for hire” and the employer is considered the author and owner of the copyright (17 U.S.C. § 201(b)). In addition, if a work is not made by an employee but is “specially ordered or commissioned,” it will be considered a work made for hire if it falls into one of nine categories enumerated in § 101(2) of the Act: a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, or an atlas. Commissioned works that do not fall into one of these nine categories (for example, software) are not automatically considered to be works made for hire, and copyright must be assigned explicitly through a separate assignment or sale agreement.

Warren v. Fox Family Worldwide, Inc.

328 f.3d 1136 (9th cir. 2003).

HAWKINS, Circuit Judge.

In this dispute between plaintiff-appellant Richard Warren (”Warren”) and defendants-appellees Fox Family Worldwide (“Fox”), MTM Productions (“MTM”), Princess Cruise Lines (“Princess”), and the Christian Broadcasting Network (“CBN”), Warren claims that defendants infringed the copyrights in musical compositions he created for use in the television series “Remington Steele.” Concluding that Warren has no standing to sue for infringement because he is neither the legal nor beneficial owner of the copyrights in question, we affirm the district court’s Rule 12 dismissal of Warren’s complaint.

Warren and Triplet Music Enterprises, Inc. (“Triplet”) entered into the first of a series of detailed written contracts with MTM concerning the composition of music for “Remington Steele.” This agreement stated that Warren, as sole shareholder and employee of Triplet, would provide services by creating music in return for compensation from MTM. Under the agreement, MTM was to make a written accounting of all sales of broadcast rights to the series and was required to pay Warren a percentage of all sales of broadcast rights to the series made to third parties not affiliated with ASCAP or BMI. These agreements were renewed and re-executed with slight modifications in 1984, 1985 and 1986.

Warren brought suit in propria persona against Fox, MTM, CBN, and Princess, alleging copyright infringement, breach of contract, accounting, conversion, breach of fiduciary duty, breach of covenants of good faith and fair dealing, and fraud.

Warren claims he created approximately 1,914 musical works used in the series pursuant to the agreements with MTM; that MTM and Fox have materially breached their obligations under the contracts by failing to account for or pay the full amount of royalties due Warren from sales to parties not affiliated with ASCAP or BMI; and that MTM and Fox infringed Warren’s copyrights in the music by continuing to broadcast and license the series after materially breaching the contracts. As to the other defendants, Warren claims that CBN and Princess infringed his copyrights by broadcasting “Remington Steele” without his authorization. Warren seeks damages, an injunction, and an order declaring him the owner of the copyrights at issue.

Defendants argu[ed] that Warren’s infringement claims should be dismissed for lack of standing because he is neither the legal nor beneficial owner of the copyrights. The district court dismissed Warren’s copyright claims without leave to amend and dismissed his state law claims without prejudice to their refiling in state court, holding that Warren lacked standing because the works were made for hire, and because a creator of works for hire cannot be a beneficial owner of a copyright in the work. Warren appeals.

The first agreement [between the parties], signed on February 25, 1982, states that MTM contracted to employ Warren “to render services to [MTM] for the television pilot photoplay now entitled ‘Remington Steele.’” It also is clear that the parties agreed that MTM would “own all right, title and interest in and to [Warren’s] services and the results and proceeds thereof, and all other rights granted to [MTM] in [the Music Employment Agreement] to the same extent as if … [MTM were] the employer of [Warren].” The Music Employment Agreement provided:

As [Warren’s] employer for hire, [MTM] shall own in perpetuity, throughout the universe, solely and exclusively, all rights of every kind and character, in the musical material and all other results and proceeds of the services rendered by [Warren] hereunder and [MTM] shall be deemed the author thereof for all purposes.

Figure 2.1 Warren claimed that he created 1,914 musical works for the popular 1980s TV series Remington Steele .

The parties later executed contracts almost identical to these first agreements in June 1984, July 1985, and November 1986. As the district court noted, these subsequent contracts are even more explicit in defining the compositions as “works for hire.” Letters that Warren signed accompanying the later Music Employment Agreements provided: “It is understood and agreed that you are supplying [your] services to us as our employee for hire … [and] [w]e shall own all right, title and interest in and to [your] services and the results and proceeds thereof, as works made for hire.”

That the agreements did not use the talismanic words “specially ordered or commissioned” matters not, for there is no requirement, either in the Act or the caselaw, that work-for-hire contracts include any specific wording. In fact, in Playboy Enterprises v. Dumas , 53 F.3d 549 (2d Cir. 1995), the Second Circuit held that legends stamped on checks were writings sufficient to evidence a work-for-hire relationship where the legend read: “By endorsement, payee: acknowledges payment in full for services rendered on a work-made-for-hire basis in connection with the Work named on the face of this check, and confirms ownership by Playboy Enterprises, Inc. of all right, title and interest (except physical possession), including all rights of copyright, in and to the Work.” Id. at 560. The agreements at issue in the instant case are more explicit than the brief statement that was before the Second Circuit.

In this case, not only did the contracts internally designate the compositions as “works made for hire,” they provided that MTM “shall be deemed the author thereof for all purposes.” This is consistent with a work-for-hire relationship under the Act, which provides that “the employer or other person for whom the work was prepared is considered the author.” 17 U.S.C. § 201(b).

Warren argues that the use of royalties as a form of compensation demonstrates that this was not a work-for-hire arrangement. While we have not addressed this specific question, the Second Circuit held in Playboy that “where the creator of a work receives royalties as payment, that method of payment generally weighs against finding a work-for-hire relationship.” 53 F.3d at 555. However, Playboy clearly held that this factor was not conclusive. In addition to noting that the presence of royalties only “generally” weighs against a work-for-hire relationship, Playboy cites Picture Music, Inc. v. Bourne, Inc ., 457 F.2d 1213, 1216 (2d Cir. 1972), for the proposition that “[t]he absence of a fixed salary … is never conclusive.” 53 F.3d at 555. Further, the payment of royalties was only one form of compensation given to Warren under the contracts. Warren was also given a fixed sum “payable upon completion.” That some royalties were agreed upon in addition to this sum is not sufficient to overcome the great weight of the contractual evidence indicating a work-for-hire relationship.

Warren also argues that because he created nearly 2,000 musical works for MTM, the works were not specially ordered or commissioned. However, the number of works at issue has no bearing on the existence of a work-for-hire relationship. As the district court noted, a weekly television show would naturally require “substantial quantities of verbal, visual and musical content.”

The agreements between Warren and MTM conclusively show that the musical compositions created by Warren were created as works for hire, and Warren is therefore not the legal owner of the copyrights therein.

1. Employee v. Contractor . In Warren v. Fox the musical compositions created by Warren fell into one of the nine categories of “specially commissioned works” that qualify as works made for hire under § 101(2) of the Copyright Act (audiovisual works), even if they were not made by employees of the commissioning party. They will thus be classified as works made for hire so long as they can be shown to have been “specially commissioned” – the focus of the debate in Warren . A slightly different question arose in Community for Creative Non-Violence v. Reid , 490 U.S. 730 (1989). In that case Reid, a sculptor, was engaged by a nonprofit organization, CCNV, to create a memorial “to dramatize the plight of the homeless.” Sculpture is not one of the nine enumerated categories of commissioned works. Thus, even if Reid’s sculpture were “specially commissioned” (as it probably was), it would not be classified as a work made for hire under § 101 unless Reid were considered to be an employee of CCNV. CCNV argued that it exercised a certain degree of control over the subject matter of the sculpture, making it appropriate to classify Reid as its employee. The Court disagreed:

Reid is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in Baltimore, making daily supervision of his activities from Washington practicably impossible. Reid was retained for less than two months, a relatively short period of time. During and after this time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for completing the sculpture, Reid had absolute freedom to decide when and how long to work. CCNV paid Reid $15,000, a sum dependent on completion of a specific job, a method by which independent contractors are often compensated. Reid had total discretion in hiring and paying assistants. Creating sculptures was hardly regular business for CCNV. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or Social Security taxes, provide any employee benefits, or contribute to unemployment insurance or workers’ compensation funds.

Does the structure of the works made for hire doctrine under § 101(2) of the Copyright Act make sense? Why should specially commissioned works be considered works for hire only if they fall into one of the nine enumerated categories? Why is a musical composition treated so differently than a sculpture?

2. Manner of compensation . The form of compensation received by the author is mentioned in both Warren v. Fox and CCNV v. Reid . Why is this detail significant to the question of works made for hire? Are the courts’ conclusions with respect to compensation consistent between these two cases?

3. Software contractors and assignment . For a variety of professional, financial and tax-planning reasons, software developers often work as independent contractors and are not hired as employees of the companies for which they create software. And, like the sculpture in CCNV v. Reid , software is not one of the nine enumerated categories of works under § 101(2) of the Copyright Act. Thus, even if it is specially commissioned, software will not be considered a work made for hire. As a result, companies that use independent contractors to develop software must be careful to put in place copyright assignment agreements with those contractors. And because contractors often sit and work beside company employees with very little to distinguish them, neglecting to take these contractual precautions is one of the most common IP missteps made by fledgling and mature software companies alike. If you were the general counsel of a new software company, how would you deal with this issue?

4. Recordation . Section 205 of the Copyright Act provides for recordation of copyright transfers with the Copyright Office. Recordation of transfers is not required, but provides priority if the owner attempts to transfer the same copyrighted work multiple times:

§ 205(d) Priority between Conflicting Transfers.—As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice … Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.

As students of real property will surely observe, this provision resembles a “race-notice” recording statute under state law. As such, the second transferee of a copyright may prevail over a prior, unrecorded transferee if the second transferee records first without notice of the earlier transfer. Note also that this provision is applicable only to copyrights that are registered with the Copyright Office.

5. Statutory termination of assignments . Sections 203 and 304 of the Copyright Act provide that any transfer of a copyright can be revoked by the transferor between 35 and 40 years after the original transfer was made. Footnote 2 This remarkable and powerful right is irrevocable and cannot be contractually waived or circumvented. It was intended to enable authors who were young and unrecognized when they first granted rights to more powerful publishers to profit from the later success of their works. For example, in 1938 Jerry Siegel and Joseph Shuster, the creators of the Superman character, sold their rights to the predecessor of DC Comics for $130. Siegel and Shuster both died penniless in the 1990s, while Superman earned billions for his corporate owners.

Though Sections 203 and 304 were originally directed to artists, writers and composers, these provisions apply across the board to all copyrighted works including software and technical standards documents. The possibility that an original developer of Microsoft Windows could suddenly pull the plug on millions of existing licenses is somewhat ameliorated because the reversion does not apply to works made for hire or derivative works. Nevertheless, one must ask why these reversionary rights apply to software and technical documents at all. If such works of authorship are excluded as works made for hire under Section 101(2), why shouldn’t they also be excluded from Sections 203/304? Footnote 3 Is there any justification for allowing developers of copyrighted “technology” products to terminate assignments made decades ago?

6. Divisibility of copyright . Prior to the Copyright Act of 1976, copyright ownership was not divisible. That is, the owner of a copyright, say in a book, could not assign the exclusive right to produce a film based on that book to a third party. The right to produce a film could be licensed to a third party, but an attempted assignment of the right would potentially be invalid or treated as a license. Footnote 4 But today, under 17 U.S.C. § 201(d)(2), “Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred … and owned separately.” What do you think was the rationale for this change in the law? Why would, say, a film studio prefer to “own” the right to produce a film based on a book rather than have a license to do so?

Figure 2.2 The creators of the Superman character died in near poverty while the Man of Steel went on to form a multi-billion-dollar franchise. Sections 203 and 304 of the US Copyright Act were enacted to enable authors and their heirs to terminate any copyright assignment or license between 35 and 40 years after originally made in order to permit them to share in the value of their creations .

2.3 Assignment Of Patent Rights

As with other IP rights, patents, patent applications and inventions may be assigned. Patent rights initially vest in inventors who are, by definition, individuals. Unlike copyright, there is no work made for hire doctrine under US patent law. However, if an employee is “hired to invent” – that is, to perform tasks intended to result in an invention – then the employee may have a legal duty to assign the resulting invention to his or her employer. Footnote 5

Unfortunately, the “hired to invent” doctrine is murky and inconsistently applied. Footnote 6 Thus, most employers today contractually obligate their employees to assign rights in inventions and patents to them when made within the scope of their employment and/or using the employer’s resources or facilities. This requirement exists in the private sector, at nonprofit universities and research institutions, as well as government agencies. The initial assignment from an inventor to his or her employer is often filed during prosecution of a patent on a form provided by the Patent and Trademark Office. If such an assignment is not filed, the inventor’s employer obtains no rights in an issued patent other than so-called “shop rights” that allow the employer to use the patented invention on a limited basis. Footnote 7

Beyond the initial assignment from the inventor(s), the owner of a patent may assign it to a third party as any other property right. The following case turns on whether an inventor assigned his rights to his employer at the time the invention was conceived, or when the patent was issued.

Filmtec Corporation v. Allied-Signal Inc.

939 f.2d 1568 (fed. cir. 1991).

PLAGER, CIRCUIT JUDGE

Allied-Signal Inc. and UOP Inc. (Allied), defendants-appellants, appeal from the preliminary injunction issued by the district court. The trial court enjoined Allied from “making, using or selling, and actively inducing others to make use or sell TFCL membrane in the United States, and from otherwise infringing claim 7 of United States Patent No. 4,277,344 [’344].” Because of serious doubts on the record before us as to who has title to the invention and the ensuing patent, we vacate the grant of the injunction and remand for further proceedings.

The application which ultimately issued as the ‘344 patent was filed by John E. Cadotte on February 22, 1979. The patent claims a reverse osmosis membrane and a method for using the membrane to reduce the concentration of solute molecules and ions in solution. Cadotte assigned his rights in the application and any subsequently issuing patent to plaintiff-appellee FilmTec. This assignment was duly recorded in the United States Patent and Trademark Office. Defendant-appellant Allied manufactured a reverse osmosis membrane and FilmTec sued Allied for infringing certain claims of the ’344 patent.

John Cadotte was one of the four founders of FilmTec. Prior to founding FilmTec, Cadotte and the other founders were employed in various responsible positions at the North Star Division of Midwest Research Institute (MRI), a not-for-profit research organization. MRI was principally engaged in contract research, much of it for the United States (Government), and much of it involving work in the field of reverse osmosis membranes.

The evidence indicates that the work at MRI in which Cadotte and the other founders were engaged was being carried out under contract (the contract) to the Government. The contract provided that MRI

agrees to grant and does hereby grant to the Government the full and entire domestic right, title and interest in [any invention, discovery, improvement or development (whether or not patentable) made in the course of or under this contract or any subcontract … thereunder].

It appears that sometime between the time FilmTec came into being in 1977 and the time Cadotte submitted his patent application in February of 1979, he made the invention that led to the ’344 patent. As we will explain, just when in that period the invention was made is critical.

Cadotte left MRI in January of 1978. Cadotte testified that he conceived his invention the month after he left MRI. Allied disputes this, and alleges that Cadotte conceived his invention and formed the reverse osmosis membrane of the ’344 patent earlier—in July of 1977 or at least by November of 1977 when he allegedly produced an improved membrane.

Allied alleges that the evidence establishes that the contract between MRI and the Government grants to the Government “all discoveries and inventions made within the scope of their [i.e., MRI’s employees] employment,” and that the invention claimed in the ’344 patent was made by Cadotte while employed by MRI. From this Allied reasons that rights in the invention must be with the Government and therefore Cadotte had no rights to assign to FilmTec. If FilmTec lacks title to the patent, FilmTec has no standing to bring an infringement action under the ’344 patent. FilmTec counters by arguing that the trial court was correct in concluding that the most the Government would have acquired was an equitable title to the ’344 patent, which title would have been made void under 35 U.S.C. § 261 by the subsequent assignment to FilmTec from Cadotte.

The parties agree that Cadotte was employed by MRI and that the contract between MRI and the Government contains a grant of rights to inventions made pursuant to the contract. However, the record does not reflect whether the employment agreement between Cadotte and MRI either granted or required Cadotte to grant to MRI the rights to inventions made by Cadotte. Allied argues that Cadotte’s inventions were assigned nevertheless to MRI. Allied points to the provision in the contract between MRI and the Government in which MRI warrants that it will obligate inventors to assign their rights to MRI.

While this is not conclusive evidence of a grant of or a requirement to grant rights by Cadotte, it raises a serious question about the nature of the title, if any, in FilmTec. FilmTec apparently did not address this issue at the trial, and there is no indication in the opinion of the district court that this gap in the chain of ownership rights was considered by the court.

Between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest. An assignment of an expectant interest can be a valid assignment.

Figure 2.3 FilmTec reverse osmosis membrane filter.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee, and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the ’344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the ’344 patent and standing to bring the present action.

The district court was of the view that if the Government was the assignee from Cadotte through MRI, the Government would have acquired at most an equitable title, and that legal title would remain in Cadotte. The legal title would then have passed to FilmTec by virtue of the later assignment, pursuant to Sec. 261 of the [Patent Act]. Sigma Eng’g v. Halm Instrument , 33 F.R.D. 129 (E.D.N.Y. 1963).

But Sigma , even if it were binding precedent on this court, does not stretch so far. The issue in Sigma was whether the plaintiff, assignee of the patent rights of the inventors, was the real party in interest such as to be able to maintain the instant action for patent infringement. Defendant claimed that the inventors’ employer had title to the invention by virtue of the employment contract which obligated the inventors to transfer all patent rights to inventions made while in its employ. As the court expressly noted, no such transfers were made, however, and the court considered any possible interest held by the employer in the invention to be in the nature of an equitable claim.

In our case, the contract between MRI and the Government did not merely obligate MRI to grant future rights, but expressly granted to the Government MRI’s rights in any future invention. Ordinarily, no further act would be required once an invention came into being; the transfer of title would occur by operation of law. If a similar contract provision existed between Cadotte and MRI, as MRI’s contract with the Government required, and if the invention was made before Cadotte left MRI’s employ, as the trial judge seems to suggest, Cadotte would have no rights in the invention or any ensuing patent to assign to FilmTec.

Because of the district court’s view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. This is an application of the common law bona fide purchaser for value rule.

Figure 2.4 Schematic showing possible assignment pathways for Cadotte’s invention.

Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

Both the common law rule and the statute contemplate that the subsequent purchaser be exactly that—a transferee who pays valuable consideration, and is without notice of the prior transfer. The trial judge, with reference to FilmTec’s rights as a subsequent purchaser, stated simply that “FilmTec is a subsequent purchaser from Cadotte for independent consideration. There is no evidence presented to imply that FilmTec was on notice of any previous assignment.” The court concluded that, even if the MRI contract automatically transferred title to the Government, such assignment is not enforceable at law as it was never recorded.

“the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute.”

Since this matter will be before the trial court on remand, it may be useful for us to clarify what is required before FilmTec can properly be considered a subsequent purchaser entitled to the protections of Sec. 261. In the first place, FilmTec must be in fact a purchaser for a valuable consideration. This requirement is different from the classic notion of a purchaser under a deed of grant, where the requirement of consideration was a formality, and the proverbial peppercorn would suffice to have the deed operate under the statute of uses. Here the requirement is that the subsequent purchaser, in order to cut off the rights of the prior purchaser, must be more than a donee or other gratuitous transferee. There must be in fact valuable consideration paid so that the subsequent purchaser can, as a matter of law, claim record reliance as a premise upon which the purchase was made. That, of course, is a matter of proof.

In addition, the subsequent transferee/assignee—FilmTec in our case—must be without notice of any such prior assignment. If Cadotte’s contract with MRI contained a provision assigning any inventions made during the course of employment either to MRI or directly to the Government, Cadotte would clearly be on notice of the provisions of his own contract. Since Cadotte was one of the four founders of FilmTec, and the other founders and officers were also involved at MRI, FilmTec may well be deemed to have had actual notice of an assignment. Given the key roles that Cadotte and the others played both at MRI and later at FilmTec, at a minimum FilmTec might be said to be on inquiry notice of any possible rights in MRI or the Government as a result of Cadotte’s work at MRI. Thus once again, the key to FilmTec’s ability to show a likelihood of success on the merits lies in the relationship between Cadotte and MRI.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction and for further proceedings consistent with this opinion.

VACATED AND REMANDED .

1. Recording of title . As noted in Section 2.1 , Note 4, assignments of patents may be recorded at the Patent and Trademark Office. As provided in 35 U.S.C. § 261,

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

This provision is a modified form of the familiar “race-notice” recording statute that applies to real estate transactions. Footnote 8 Unlike the comparable provision of the Copyright Act (17 U.S.C. § 205(d), discussed in Section 2.2 ), the second assignee of a patent may prevail over a prior, unrecorded assignee if the second assignee records first without notice of the earlier assignment unless the first assignee records within three months of the first assignment. An assignee of a patent thus has a three-month grace period in which to record its transfer without fear of being superseded by a second assignment. What is the reason for this three-month grace period, which exists neither in copyright nor real property law?

2. Inquiry notice . The court in FilmTec borrows the notion of “inquiry notice” from the law of real property recording. What is inquiry notice? Footnote 9 How does it differ from actual notice and constructive notice?

3. Present v. Future Grants of Patent Rights . The court in FilmTec explains that “the contract between MRI and the Government did not merely obligate MRI to grant future rights, but expressly granted to the Government MRI’s rights in any future invention. Ordinarily, no further act would be required once an invention came into being; the transfer of title would occur by operation of law.” That is, disregarding MRI’s failure to record the transfer, MRI’s present grant of rights in a future patent to the government (assuming that MRI had previously obtained the requisite rights from Cadotte) would automatically convey those rights to the government as soon as an invention was made.

A similar fact pattern arose in Stanford v. Roche , 563 U.S. 776 (2011) (reproduced, in part, in Section 14.1 ). In that case, a Stanford researcher who was obligated under Stanford’s policies to assign inventions to Stanford also signed an agreement assigning his future invention rights to Cetus Corp. while visiting the company to use its equipment. The Federal Circuit ruled for Cetus, reasoning that, under FilmTec , the researcher’s present assignment of future patent rights to Cetus automatically became effective when a patent application was filed, leaving nothing for him to assign to the holder of a future promise of assignment (i.e., Stanford). Stanford successfully sought certiorari on different grounds (whether the Bayh–Dole Act overrode these contractual provisions), and the Supreme Court affirmed the judgment for Cetus without reaching the assignment issue.

However, Justices Breyer and Ginsburg dissented (joined by Justice Sotomayor, who concurred in the judgment) on the ground that the Federal Circuit’s 1991 rule in FilmTec seemingly contradicted earlier precedent. Citing one 1867 treatise and a 1958 law review note, Justice Breyer proposed that before FilmTec , “a present assignment of future inventions (as in both contracts here) conveyed equitable, but not legal, title” and that this equitable interest “grants equitable enforcement to an assignment of an expectancy but demands a further act, either reduction to possession or further assignment of the right when it comes into existence.” In other words, the researcher’s present “assignment” of his future patent rights to Cetus would give Cetus an equitable claim to seek “legal title” once an invention existed or a patent application was filed. On this basis, Justice Breyer concludes,

Under this rule, both the initial Stanford and later Cetus agreements would have given rise only to equitable interests in Dr. Holodniy’s invention. And as between these two claims in equity, the facts that Stanford’s contract came first and that Stanford subsequently obtained a postinvention assignment as well should have meant that Stanford, not Cetus, would receive the rights its contract conveyed.

Despite Justice Breyer’s dissatisfaction with the holdings of FilmTec and Stanford v. Roche , their approach to future assignments still appears to be the law. Footnote 10 Which approach do you think most accurately reflects the intentions of the parties? What policy ramifications might each rule have ?

4. Shall versus does. The result in Stanford v. Roche turns on the wording of two competing legal instruments – Dr. Holodniy’s assignments to Cetus and Stanford. As noted by the Federal Circuit in the decision below, Holodniy’s initial agreement with Stanford constituted a mere promise to assign his future patent rights to Stanford, whereas his agreement with Cetus acted as a present assignment of his future patent rights to Cetus, thus giving the patent rights to Cetus (583 F.3d 832, 841–842 (2009)). As explained by Justice Breyer in his dissent: Footnote 11

In the earlier agreement—that between Dr. Holodniy and Stanford University—Dr. Holodniy said, “I agree to assign … to Stanford … that right, title and interest in and to … such inventions as required by Contracts and Grants.” In the later agreement—that between Dr. Holodniy and the private research firm Cetus—Dr. Holodniy said, “I will assign and do hereby assign to Cetus, my right, title, and interest in” here relevant “ideas” and “inventions.” The Federal Circuit held that the earlier Stanford agreement’s use of the words “agree to assign,” when compared with the later Cetus agreement’s use of the words “do hereby assign,” made all the difference. It concluded that, once the invention came into existence, the latter words meant that the Cetus agreement trumped the earlier, Stanford agreement. That, in the Circuit’s view, is because the latter words operated upon the invention automatically, while the former did not.

What could Stanford have done to avoid this problem? How do you think the result of Stanford v. Roche affected the wording of university patent policies and assignment documents in general? Footnote 12 Given this holding, should an assignment agreement ever be phrased in any way other than “Assignor hereby grants to Assignee … ”? Was Dr. Holodniy himself at fault in this situation? What, if anything, should he have done differently ?

5. Breadth of employee invention assignments . As noted in the introduction to this section, employers who wish to obtain assignments of the inventions created by their employees must do so pursuant to written assignment agreements. But how broad can these assignments be? In Whitewater West Indus. v. Alleshouse , 2020 U.S. App. LEXIS 36394 (Fed. Cir. 2020), the Federal Circuit reviewed an employee assignment agreement that contained the following provision:

a. Assignment: In consideration of compensation paid by Company, Employee agrees that all right, title and interest in all inventions, improvements, developments, trade-secret, copyrightable or patentable material that Employee conceives or hereafter may make or conceive , whether solely or jointly with others:

(a) with the use of Company’s time, materials, or facilities; or (b) resulting from or suggested by Employee’s work for Company; or (c) in any way connected to any subject matter within the existing or contemplated business of Company

shall automatically be deemed to become the property of Company as soon as made or conceived, and Employee agrees to assign to Company, its successors, assigns, or nominees, all of Employee’s rights and interests in said inventions, improvements, and developments in all countries worldwide. Employee’s obligation to assign the rights to such inventions shall survive the discontinuance or termination of this Agreement for any reason.

This provision, on its face, appears to require not only that current employees assign their inventions to the company (a typical provision in employment agreements), but also that former employees continue to make such assignments indefinitely in the future, so long as such inventions are “in any way connected to any subject matter within the existing or contemplated business of Company.” Needless to say, this provision is quite aggressive.

Richard Alleshouse, a designer of water park attractions, was hired by Wave Loch, Inc., a company operating in California, in October 2007. In September 2008, Alleshouse signed a Covenant Against Disclosure and Covenant Not to Compete containing the above assignment clause. In 2012, Alleshouse left Wave Loch to cofound a new company in the same line of business. There, he continued to develop and patent features of surfing-based water park attractions. In 2017, Wave Loch (through its successor Whitewater West) sued Alleshouse for breach of contract and correction of inventorship, seeking to acquire title to three patents on which Alleshouse was listed as a co-inventor following his departure from Wave Loch.

In evaluating Wave Loch’s claim, the Federal Circuit considered California Business and Professions Code § 16600, which states: “Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.” This statutory provision has traditionally been interpreted to prohibit companies from imposing noncompetition restrictions on former employees. In this case, however, the Federal Circuit extended its reach to prohibit assignments of future IP rights not based on the company’s own IP. In assessing the over-breadth of the provision, the court noted that:

No trade-secret or other confidential information need have been used to conceive the invention or reduce it to practice for the assignment provision to apply. The obligation is unlimited in time and geography. It applies when Mr. Alleshouse’s post-employment invention is merely “suggested by” his work for Wave Loch. It applies, too, when his post-employment invention is “in any way connected to any subject matter” that was within Wave Loch’s “existing or contemplated” business when Mr. Alleshouse worked for Wave Loch.

Under these circumstances, the court invalidated the assignment provision, reasoning that it “imposes [too harsh a] penalty on post-employment professional, trade, or business prospects—a penalty that has undoubted restraining effect on those prospects and that a number of courts have long held to invalidate certain broad agreements with those effects.”

Interestingly, Wave Loch cited Stanford v. Roche in its defense, arguing that the court there interpreted § 16600 to uphold the invention assignment provision used by Cetus. The Federal Circuit rejected this argument, however, stating that in Stanford , unlike Whitewater , “there was simply no evidence of a restraining effect on [the researcher’s] ability to engage in his profession.” But as pointed out by Professor Dennis Crouch, “The weak point of the Federal Circuit’s decision [in Whitewater ] is that it is seemingly contrary to its own prior express statement [in Stanford ] that ‘section 16600 [applies] to employment restrictions on departing employees, not to patent assignments.’” Footnote 13

Which view do you find more persuasive? Should Alleshouse have been required to assign his post-departure patents to Wave Loch? What would the result be in a state that did not have an analog to California’s § 16600? Should this question be resolved under Federal patent law ?

6. When does an assignable invention exist ? Another twist relating to employee invention assignments involves the point in time when an “invention” actually comes into existence and can thus be assigned. In Bio-Rad Labs, Inc. v. ITC and 10X Genomics (Fed. Cir. 2021), two employees each agreed to assign to Bio-Rad, their employer, any IP, including ideas, discoveries and inventions, that he “conceives, develops or creates” during his employment. Both employees left Bio-Rad to form 10X Genomics, which competed with Bio-Rad. Four months later, 10X began to file patent applications on technology that the employees had worked on while at Bio-Rad. The employees claimed that, while their work at 10X was related to their work at Bio-Rad, they did not actually “conceive” the inventions leading to their patents until after they had joined 10X. The Federal Circuit, applying California employment and contract law, agreed, holding that the assignment clause in the Bio-Rad agreements related to “intellectual property” and that an unprotectable “idea,” even if later leading to a patentable invention, was not IP and could thus not be assigned. That is, the court found that the assignment duty under the agreement was “limited to subject matter that itself could be protected as intellectual property.” If this is the case, then why did the Bio-Rad agreement expressly call for the assignment of “ideas” in addition to inventions and other forms of IP?

Figure 2.5 Richard Alleshouse was the product manager for Wave Loch’s FlowRider attraction, shown here as installed on the upper deck of a Royal Caribbean cruise ship.

Professor Dennis Crouch contrasts Bio-Rad with Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., Ltd ., 964 F.3d 1365 (Fed. Cir. 2020), in which unpatentable, pre-conception ideas did give rise to a claim for ownership of patentable inventions conceived later. Footnote 14 Which approach do you think most accurately reflects the intentions of the parties? How would you draft an assignment agreement to unambiguously cover pre-conception ideas, or to avoid such assignments?

7. Indivisibility of patent rights . Unlike copyrights (see Section 2.2 , Note 5), the rights “within” a patent are indivisible. That is, the owner of a patent may not assign one claim of the patent to another, nor may it assign the exclusive right to make or sell one particular type of product. As set out by the Supreme Court in Waterman v. MacKenzie , 138 U.S. 252 (1891), a patent owner’s only options are to assign (1) the whole patent, (2) an undivided part or share of the whole patent, or (3) the patent rights “within and throughout a specified part of the United States” (a rarity these days). Thus, when a patent owner, under option (2), assigns “an undivided part” of a patent, the assignee receives an undivided interest in the whole, becoming a tenant in common with the original owner and any other co-owners (the rights and duties of such joint patent owners are discussed in greater detail in Section 2.5 ). Why do patents and copyrights differ in this regard? Should patents be “divisible” like copyrights? What advantages or disadvantages might arise from such divisibility?

8. Past infringement . The general rule in the United States is that “one seeking to recover money damages for infringement of [a] patent … must have held the legal title to the patent during the time of the infringement.” Arachnid, Inc. v. Merit Indus., Inc . 939 F.2d 1574, 1579 (Fed. Cir. 1991). Thus, the assignee of a patent only obtains the right to sue for infringement that occurred while it owned the patent. As the Supreme Court held a century and a half ago, “It is a great mistake to suppose that the assignment of a patent carries with it a transfer of the right to damages for an infringement committed before such assignment.” Moore v. Marsh , 74 U.S. (7 Wall.) 515 (1868). This rule often acts as a trap for the unwary (see, e.g., Nano-Second Technology Co., Ltd. v. Dynaflex International , 2013 U.S. Dist. LEXIS 62611 (N.D. Cal.) (language purporting to assign “the entire right, title and interest” to a patent failed to convey the right to sue for past infringement)). As a result, if the assignee wishes to sue for infringement occurring prior to the date of the assignment, the assignment must contain an express conveyance of this right. Does this rule still make sense today? Why might an assignor of a patent not wish to assign the right to sue for past infringement to a purchaser of the patent? What language would you use in an assignment clause to convey this important right to the assignee ?

Problem 2.1

The Brokeback Institute (BI) is a leading medical research center. The IP assignment clause in its standard consulting agreement reads as follows:

Consultant hereby assigns to BI all of its ownership, right, title, and interest in and to all Work Product. An Invention will be considered “Work Product” if it fits any of the following three criteria: (1) it is developed using equipment, supplies, facilities, or trade secrets of BI; (2) it results from Consultant’s work for BI; or (3) it relates to BI’s business or its current or anticipated research and development.

How would you react to and/or revise this clause if you represented a consultant who was one of the following:

a. A software developer being engaged by BI for a six-month, full-time engagement to update BI’s medical records software database.

b. A Nobel laureate biochemist with a faculty appointment at Harvard who will be visiting BI to teach a three-week summer class to freshman pre-med students.

c. A brain researcher from Oxford who has been invited to serve on the scientific advisory board of a BI grant-funded neurosurgery project, which will involve participation in one telephonic board meeting per calendar quarter.

d. A pathologist who will advise BI on the design of its new pathology lab, which is expected to require fifty hours of work over the next year.

Problem 2.2

Help out Stanford University by drafting an IP assignment clause applicable to its faculty members, including those who occasionally visit other institutions and companies to use their equipment and facilities.

2.4 Trademark Assignments and Goodwill

Like copyrights and patents, trademarks may be assigned by their owners. But as IP rights, trademarks differ in important respects from copyrights and patents. Most fundamentally, as discussed in the following case, an assignment of a registered trademark is invalid unless it is accompanied by an assignment of the associated business goodwill.

Sugar Busters LLC v. Brennan

177 f.3d 258 (5th cir. 1999).

KING, Chief Judge

Plaintiff-appellee Sugar Busters, L.L.C. (plaintiff) is a limited liability company organized by three doctors and H. Leighton Steward, who co-authored and published a book entitled “ SUGAR BUSTERS! Cut Sugar to Trim Fat ” in 1995. In “ SUGAR BUSTERS! Cut Sugar to Trim Fat ,” the authors recommend a diet plan based on the role of insulin in obesity and cardiovascular disease. The authors’ premise is that reduced consumption of insulin-producing food, such as carbohydrates and other sugars, leads to weight loss and a more healthy lifestyle. The 1995 publication of “ SUGAR BUSTERS! Cut Sugar to Trim Fat ” sold over 210,000 copies, and in May 1998 a second edition was released. The second edition has sold over 800,000 copies and remains a bestseller.

Brennan then co-authored “ SUGAR BUST For Life! ,” which was published in May 1998. “ SUGAR BUST for Life ” states on its cover that it is a “cookbook and companion guide by the famous family of good food,” and that Brennan was “Consultant, Editor, Publisher, [and] Sales and Marketing Director for the original, best-selling ‘ Sugar Busters!™ Cut Sugar to Trim Fat .’” Approximately 110,000 copies of “ SUGAR BUST for Life !” were sold between its release and September 1998.

Plaintiff filed this suit in the United States District Court for the Eastern District of Louisiana on May 26, 1998. Plaintiff sought to enjoin [Brennan] from selling, displaying, advertising or distributing “ SUGAR BUST for Life !,” to destroy all copies of the cookbook, and to recover damages and any profits derived from the cookbook.

The mark that is the subject of plaintiff’s infringement claim is a service mark that was registered in 1992 by Sugarbusters, Inc., an Indiana corporation operating a retail store named “Sugarbusters” in Indianapolis that provides products and information for diabetics. The “SUGARBUSTERS” service mark, registration number 1,684,769, is for “retail store services featuring products and supplies for diabetic people; namely, medical supplies, medical equipment, food products, informational literature and wearing apparel featuring a message regarding diabetes.” Sugarbusters, Inc. sold “any and all rights to the mark” to Thornton-Sahoo, Inc. on December 19, 1997, and Thornton-Sahoo, Inc. sold these rights to Elliott Company, Inc. (Elliott) on January 9, 1998. Plaintiff obtained the service mark from Elliott pursuant to a “servicemark purchase agreement” dated January 26, 1998. Under the terms of that agreement, plaintiff purchased “all the interests [Elliott] owns” in the mark and “the goodwill of all business connected with the use of and symbolized by” the mark.

The district court found that the mark is valid and that the transfer of the mark to plaintiff was not “in gross” because

[t]he plaintiff has used the trademark to disseminate information through its books, seminars, the Internet, and the cover of plaintiff’s recent book, which reads “ Help Treat Diabetes and Other Diseases .” Moreover, the plaintiff is moving forward to market and sell its own products and services, which comport with the products and services sold by the Indiana corporation. There has been a full and complete transfer of the good will related to the mark …

A trademark is merely a symbol of goodwill and has no independent significance apart from the goodwill that it symbolizes. Therefore, a trademark cannot be sold or assigned apart from the goodwill it symbolizes. The sale or assignment of a trademark without the goodwill that the mark represents is characterized as in gross and is invalid.

The purpose of the rule prohibiting the sale or assignment of a trademark in gross is to prevent a consumer from being misled or confused as to the source and nature of the goods or services that he or she acquires. Use of the mark by the assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing, whether used by one person or another. Therefore, if consumers are not to be misled from established associations with the mark, [it must] continue to be associated with the same or similar products after the assignment.

Plaintiff’s purported service mark in “SUGARBUSTERS” is valid only if plaintiff also acquired the goodwill that accompanies the mark; that is, “the portion of the business or service with which the mark is associated.” [Brennan] claim[s] that the transfer of the “SUGARBUSTERS” mark to plaintiff was in gross because “[n]one of the assignor’s underlying business, including its inventory, customer lists, or other assets, were transferred to [plaintiff].” [Brennan’s] view of goodwill, however, is too narrow. Plaintiff may obtain a valid trademark without purchasing any physical or tangible assets of the retail store in Indiana – the transfer of goodwill requires only that the services be sufficiently similar to prevent consumers of the service offered under the mark from being misled from established associations with the mark.

In concluding that goodwill was transferred, the district court relied … on its finding that “plaintiff is moving forward to market and sell its own products and services, which comport with the products and services sold by the Indiana corporation.” Steward testified, however, that plaintiff does not have any plans to operate a retail store, and plaintiff offered no evidence suggesting that it intends to market directly to consumers any goods it licenses to carry the “SUGAR BUSTERS!” name. Finally, we are unconvinced by plaintiff’s argument that, by stating on the cover of its diet book that it may “[h]elp treat diabetes and other diseases” and then selling some of those books on the Internet, plaintiff provides a service substantially similar to a retail store that provides diabetic supplies. We therefore must conclude that plaintiff’s purported service mark is invalid.

1. Acquiring goodwill . The Servicemark Purchase Agreement between Elliott and Sugar Busters, LLC clearly purported to transfer “the goodwill of all business connected with the use of and symbolized by” the SUGARBUSTERS mark. Given this language, why did the Fifth Circuit find that the goodwill of the business was not transferred? In view of the court’s holding, how would you advise a client if it desires to acquire a trademark but not to conduct the same business as the prior owner of the mark?

2. Consumer confusion . Generally, trademark infringement cases hinge on whether an alleged infringer is causing consumer confusion as to the source of goods or services. A similar theory applies to the Fifth Circuit’s rule on in gross trademark assignments: If the new goods sold under the mark are significantly different than the old goods sold under the mark, then consumers might be confused as to the source and nature of the goods being sold. Why is this the case? What is the harm in this confusion?

3. Effect of an in gross transfer . Professor Barton Beebe notes, in discussing the Sugar Busters case, that “In most situations … the assignee may claim exclusive rights in the mark, but the basis of and the priority date for those rights stems only from the assignee’s new use of the mark, not from any previous use by the assignor.” Footnote 15 This conclusion is sensible – without the accompanying goodwill, the acquirer gets nothing from the original mark owner, but may begin to use the mark afresh and may build up goodwill based on its own use. But does this reasoning correspond with the holding of Sugar Busters ? Note the date on which the plaintiff purported to acquire the trademark from Elliott (January 26, 1998), when Brennan’s allegedly infringing book was released (May 26, 1998) and when the plaintiff brought suit against Brennan (May 26, 1998). Even if the plaintiff acquired no trademark rights at all from Elliott, wouldn’t it have acquired some enforceable rights between January and May, 1998? And what about any common law trademark rights that the plaintiff accrued from the 1995 publication of its first Sugar Busters book?

4. Toward free transfer ? Professor Irene Calboli argues that the rule requiring transfer of goodwill with trademarks is an outdated trap for the unwary that should be abolished. She hypothesizes a transaction in which a new company acquires the Coca-Cola Company, observing all the proper formalities, and then decides to apply the famous Coca-Cola mark not to carbonated colas, but to salty snacks. Will consumers be confused? Possibly, but the new owner is perfectly within its rights to apply the mark to its snack products rather than colas. Would consumers be worse off if the transaction documentation had neglected to reflect a transfer of goodwill? Calboli reasons that

the rule of assignment “with goodwill” is failing to meet its purpose and … rather than focusing on a sterile and confusing requirement, the courts should focus directly on the assignee’s use of the mark. If this use is likely to deceive the public, the courts should declare the assignments at issue void. Yet, if no likelihood of confusion or deception results from the transaction, the courts should allow the assignments to stand. Footnote 16

Do you agree? Does the prohibition on in gross transfers of trademarks serve any useful purpose today? Footnote 17

5. Recordation . The recordation requirements for trademarks are similar to those for patents. As provided under 15 U.S.C. § 1060(3):

An assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.

As with patents, this provision is a modified form of “race-notice” recording statute. The second assignee of a trademark may prevail over a prior, unrecorded assignee if the second assignee records first without notice of the earlier assignment unless the first assignee records within three months of the first assignment.

6. Security interests and mortgages . The recording statute for patents 35 U.S.C. § 261 refers to “a subsequent purchaser or mortgagee” of a patent, whereas the statute for trademarks refers only to “a subsequent purchaser.” Why does the trademark statute omit mention of mortgagees? Can a trademark be mortgaged? What might prevent this from happening effectively?

7. Short-form assignments . Intellectual property rights are often conveyed as part of a larger corporate merger or acquisition transaction. In order to avoid filing the entire transaction agreement with the Patent and Trademark Office for recording purposes, the parties often execute a short-form assignment document that pertains only to the assigned patents or trademarks. This short-form document is then recorded at the Patent and Trademark Office. A sample of such a short-form assignment follows.

Short-Form Trademark Assignment (for Filing with the US Patent and Trademark Office)

This assignment is made as of the ____ day of ______________ by ASSIGNOR INC., a _______ corporation having a principal place of business at ______________, hereinafter referred to as the ASSIGNOR, to ASSIGNEE CORP., a ___________ corporation, having a principal place of business at __________________, hereinafter referred to as ASSIGNEE.

WHEREAS, ASSIGNOR is the owner of the registered trademarks and trademark applications, hereinafter collectively referred to as the TRADEMARKS, identified on Schedules “A” and “B” attached hereto, together with the good will and all rights which may have accrued in connection therewith.

WHEREAS, ASSIGNEE is desirous of acquiring the entire right, title and interest of ASSIGNOR in and to said TRADEMARKS together with said rights and the good will of the business symbolized thereby.

NOW, THEREFORE, for good and valuable consideration paid by the ASSIGNEE, receipt of which is hereby acknowledged, ASSIGNOR does hereby sell, assign, transfer and set over to ASSIGNEE, its successors and assigns, ASSIGNOR’s entire right, title and interest in and to the TRADEMARKS, together with said good will of the business symbolized thereby, said TRADEMARKS to be held and enjoyed by the ASSIGNEE, its successors and assigns as fully and entirely as the same would have been held and enjoyed by the ASSIGNOR had this assignment not been made.

ASSIGNOR covenants and agrees to execute such further and confirmatory assignments in recordable form as the ASSIGNEE may reasonably require to vest record title of said respective registrations in ASSIGNEE.

IN WITNESS WHEREOF, ASSIGNOR has caused this Assignment to be executed by a duly authorized officer.

By: _____________________ Date: ____________________

2.5 Assignment of Trade Secrets

Like other IP rights, trade secrets may be assigned by their owners. As the leading treatise on trade secret law announces in the heading of one of its chapters, “Trade Secrets Are Assignable Property.” Footnote 18 Yet the assignment of trade secrets is perhaps the least developed and understood among IP types.

Part of the complexity arises from the fact that the term “trade secret” refers to two distinct concepts: A trade secret is, on one hand, a piece of information that derives value from being kept secret. Yet the term also refers to the set of enforceable legal rights that give the “owner” of that information legal redress for its improper acquisition or usage. In some ways, this dichotomy is similar to that seen with patents and copyrights. On one hand, there is an invention, and on the other hand, a patent right that gives its owner enforceable legal rights with respect to that invention. Likewise, a work of authorship and the copyright in that work of authorship. Unfortunately, trade secrecy law is hobbled by the existence of only a single term to describe both the res that is protected, and the legal mode of its protection.

It is for this reason that the few courts that have considered issues surrounding trade secret assignment have distinguished between “ownership” of a trade secret and its “possession.” In DTM Research, L.L.C. v. AT&T Corp ., 245 F.3d 327, 332 (4th Cir. 2001), the court held that “While the information forming the basis of a trade secret can be transferred, as with personal property, its continuing secrecy provides the value, and any general disclosure destroys the value. As a consequence, one ‘owns’ a trade secret when one knows of it, as long as it remains a secret.” Accordingly, the court held that a party possessing secret information is entitled to seek redress against another party that misappropriated it, even if the first party lacks “fee simple” title to that information (i.e., if the first party itself allegedly misappropriated the information from another).

Possession of a trade secret also figures prominently in cases that discuss the assignment of trade secrets. When the owner of a copyrighted work of art transfers the copyright to a buyer, the transferor loses its right to reproduce the work further. Likewise, when the owner of a trade secret transfers that secret to a buyer, the transferor loses its right to exploit that secret further. As the court explained in Memry Corp. v. Ky. Oil Tech., N.V ., 2006 U.S. Dist. LEXIS 94393 at *16 (N.D. Cal. 2006), “in giving up all rights to use of the secrets through assignment, the assignor is implicitly and legally bound to maintain the secrecy of the information contained in the trade secrets.”

2.6 Joint Ownership

Just like real and personal property, IP may be co-owned by multiple parties. But the laws regarding joint ownership of IP are different than those affecting real and personal property. To make matters worse, they also differ based on the kind of IP involved, and they vary from country to country. As a result, planning for joint ownership of IP can become fraught with risks and traps for the unwary. As one waggish practitioner has written, “‘Joint ownership of IP’ – no words strike more terror into the heart of an IP practitioner than the task of having to provide appropriate contractual provisions in such a situation.” Footnote 19

Joint ownership of IP rights impacts prosecution of patents and trademarks, exploitation of those rights, and licensing and enforcement of rights. These principles are discussed below in the context of patents, copyrights, trade secrets and trademarks under US law.

2.6.1 Patents

When more than one individual makes an inventive contribution to an invention, the resulting patent will be jointly owned. As explained by the Federal Circuit in Ethicon v. United States Surgical Corp. , 135 F.3d 1456, 1465 (Fed. Cir. 1998), “in the context of joint inventorship, each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.”

The rights of joint owners of patents are described in 35 U.S. Code § 262:

In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.

Thus, each co-owner of a patent may independently exploit the patent without the consent of its co-owners. But unlike copyrights, joint owners of patents do not owe one another a duty of accounting or sharing of profits. Thus, the co-owner of a patented process that uses it to embark on a profitable new manufacturing venture has no obligation to share any of its earnings with the co-owners of the patent.

Any co-owner of a patent may also license it to others, again with no obligation to share royalties or other amounts received with its co-owners. Footnote 20 While a co-owner may grant an exclusive license to a third party, and that exclusivity may operate to prevent the granting co-owner from granting further licenses to others, it has no effect on the other co-owners of the patent, who may continue to exploit or grant other licenses under the patent.

Likewise, any co-owner of a patent may bring suit to enforce it against an infringer, but in order for the suit to proceed, it must join all other co-owners in the suit (see Section 11.1.5 ). Moreover, as illustrated in Ethicon , a retroactive license from any co-owner will serve to authorize the infringer’s conduct, thus defeating a suit brought by fewer than all co-owners .

2.6.2 Copyrights

There are some similarities between the treatment of joint owners under US copyright and patent law. Under US copyright law, each co-owner of a copyright may independently exploit the copyright without permission of the other co-owners. This exploitation includes performance, reproduction, creation of derivative works and all other exclusive rights afforded by the Copyright Act. However, unlike patents, a copyright co-owner who earns profits from the exploitation of a jointly owned work must render an accounting to his or her co-owners and share the profits with them on a pro rata basis. Thus, if three members of a band compose a song, and one of them quits to pursue a solo career, the soloist must account to the other two for any profits that he or she earns from performing the song (or a derivative of it) for the duration of the copyright.

Likewise, any co-owner of a copyright may license the copyright to others. As with patents, an exclusive license granted by a single co-owner will not be particularly valuable to the licensee, as the other co-owners are free to license the same rights to others. Such an exclusive license will thus be considered nonexclusive for purposes of standing to sue. Footnote 21 As with other exploitation, the copyright licensor must account to the other co-owners for any profits earned based on the license.

Finally, any co-owner of a copyright may sue to enforce the copyright against an infringer without the consent of the other co-owners. As with patents, a license from any co-owner will serve to authorize the infringer’s conduct. But unlike patent infringement litigation, notice to the co-owners of a copyright, and their joinder in an infringement suit, is not mandatory, but discretionary in the court (see 17 U.S.C. § 501(b), discussed in greater detail in Section 11.1.5 , Note 5).

2.6.3 Trade Secrets

There is scant case law, and little reliable commentary, discussing the rights and obligations of joint owners of trade secrets to one another. Yet from the authority that exists, it appears that joint owners of trade secrets, unlike joint owners of patents and copyrights, are not free to exploit jointly owned trade secrets without the consent of their co-owners.

Thus, in Morton v. Rank Am., Inc ., 812 F. Supp. 1062, 1074 (C.D. Cal. 1993), one co-owner of trade secrets relating to the operations of the Hard Rock Café chain sued another co-owner who used the information in violation of a noncompetition agreement. The court held that, under California law, being the co-owner of a trade secret does not necessarily insulate one from a claim of trade secret misappropriation. In Jardin v. DATAllegro, Inc ., 2011 U.S. Dist. LEXIS 84509 *15 (S.D. Cal. 2011), another California court, citing Morton , held that a joint owner of a trade secret could be liable for disclosing the trade secret in a patent application without the permission of his co-owner.

It also appears, in at least one case, that a co-owner of a trade secret may sue a third party for misappropriation of that trade secret without the consent of the other co-owner(s). In MGP Ingredients, Inc. v. Mars, Inc ., 465 F. Supp. 2d 1109 (D. Kan. 2006), MGPI and SNM jointly owned trade secrets relating to the formulation of the popular Greenies® dog chews. MGPI alleged that SNM impermissibly disclosed these trade secrets to Mars, Inc., which then began to manufacture its own dog chews using the secret formula. The court rejected Mars’ motion to dismiss MGPI’s suit for trade secret misappropriation against both SNM and Mars on the basis that SNM was a co-owner of the trade secrets .

2.6.4 Trademarks

Unlike patents, copyrights and trade secrets, the primary purpose of a trademark is to act as an indication of the source of goods or services. The ownership of a single mark by two or more entities contradicts this fundamental principle and is thus “disfavored” by the law. As the Sixth Circuit cautions in Yellowbook Inc. v. Brandeberry , 708 F.3d 837, 845 (6th Cir. 2013),

Joint ownership is disfavored in the trademark context. By their nature, trademarks derive their value from exclusively identifying a particular business. If customers are confused about which business the mark refers to, one of the users may unfairly benefit from the goodwill of the other, or the goodwill of the mark may be dissipated entirely. Beneficial joint ownership or licensing schemes may be devised, but courts are not well placed to fill in these details, and parties (and customers) are typically best served by exclusive ownership.

Nevertheless, the PTO permits joint ownership of registered marks. One scenario in which this is permitted is when the joint owners are related companies that exhibit a “unity of control” that eliminates consumer confusion because the joint owners are, for practical purposes, operating as a single unit. Footnote 22 In another scenario, two parties may be granted “concurrent” registrations for the same mark in connection with a similar product in different geographic markets. Footnote 23 In addition, the owner of a trademark registration may assign a partial interest in that registration to a third party, after which both parties will be co-owners of the registration. Footnote 24 This situation occurs, inter alia , as a result of the break-up of joint ventures and the inheritance of businesses by multiple heirs or testamentary beneficiaries. Footnote 25

When a jointly owned trademark serves as an indication of source, no individual co-owner has the right to exploit that mark separately from the collective use made by the joint owners. For example, the four original members of the musical group “The Commodores” held common law trademark rights in the group’s name. When Thomas McClary, one of the group’s members, left the group and began to perform under the names “The 2014 Commodores” and “The Commodores Featuring Thomas McClary” the other group members sued him for trademark infringement and a number of other causes. The Eleventh Circuit held in Commodores Entm’t Corp. v. McClary , 879 F.3d 1114 (11 th Cir. 2018) that “The rights to use the name ‘The Commodores’ remained with the group after McClary departed, and the corollary is also true: McClary did not retain rights to use the marks individually.”

1. Vive la difference ? Why is there such discord among four areas of US IP law regarding the rights of joint owners? Would there be value in harmonizing these different systems? How would you recommend that such harmonization be pursued?

2. Economic justifications . Judge Richard Posner offers a potential economic justification for the discrepancies in the treatment of jointly owned copyrights and patents.

In both domains, a joint owner is allowed to use or license the jointly owned work without the permission of the other owner or owners; this rule reduces transaction costs by eliminating bilateral monopoly. But the joint owner of a copyright who uses or licenses a copyright must account to the other owners for the profits of the use and share them with those others, while the joint owner of a patent need not. The latter rule provides greater encouragement to inventors to keep working to improve their inventions, consistent with the continuously improving quality of technology, but not of the arts. Footnote 26

What do you think of this explanation? Would requiring the co-owner of a patent to share its profits from the exploitation of the patent with its co-owners decrease innovation? Why doesn’t the accounting requirement similarly dampen creative activity?

Figure 2.6 Though he was an original member of the musical group The Commodores, Thomas McClary did not retain rights to utilize the group’s name after he left the band in 1984.

3. International inconsistency . Commentators have long observed that US law is out of step with the laws of many other countries in how it handles jointly owned IP. For example, in many countries in Europe and Asia, IP rights may not be exploited, licensed or asserted without the consent of all joint owners. Is this approach preferable? What does it mean for joint owners of IP?

In 1990, Professor Robert Merges and Lawrence Locke analyzed the laws of the United States and various other countries regarding their handling of joint patent owners. They concluded, among other things, that:

The American rule permitting co-owners to work their patent without compensating the other co-owners is preferable to the French rule requiring compensation … [T]he French rule can lead to a situation where both co-owners elect not to work the patent, in hopes of forcing the other co-owner to work it and split the profits. Since society has an obvious interest in seeing patented technology developed, the American rule is better.

The right of co-owners to license and assign their full interest, or any portion of it, should be restricted according to the rule in effect on the continent, in Great Britain and in Japan: consent of all co-owners should be required. This will prevent one co-owner from taking advantage of the others … Footnote 27

Do you concur with these recommendations? Why or why not? Should any of Merges and Locke’s recommendations be applied to forms of IP other than patents?

1 See Enovsys LLC v. Nextel Commc’ns Inc ., 614 F.3d 1333, 1342 (Fed. Cir. 2010).

2 See also Section 12.4 , Note 4, discussing these statutory provisions as mechanisms for terminating copyright licenses .

3 See Timothy K. Armstrong , Shrinking the Commons: Termination of Copyright Licenses and Transfers for the Benefit of the Public , 47 Harv. J. Legis . 359 , 405–09 ( 2010 ) (discussing implications for software) and Jorge L. Contreras & Andrew Hernacki , Copyright Termination and Technical Standards , 43 U. Baltimore L. Rev . 221 ( 2014 ) (discussing implications for technical standards) .

4 See Jonathan M. Barnett , Why Is Everyone Afraid of IP Licensing ? 30 Harv. J.L. & Tech. 123 , 126 ( 2017 ) .

5 See Standard Parts Co. v. Peck , 264 U.S. 52 (1924) (employee hired to invent a specific improvement owed a duty to assign patent rights to the employer even though the employment contract did not specifically mention patent rights).

6 See 8 Chisum on Patents § 22.03[2] (“The line between these ‘hired-to-invent’ and ‘general employment’ categories is a fine one, and it often must be drawn on the basis of sharply conflicting testimony … [ Standard Parts Co. v. Peck ] has served as a precedent for a multitude of decisions by lower federal courts, both finding (1) an employment to invent and (2) the absence of such employment.”)

7 As explained by Professor Chisum, “The classic ‘shop right’ doctrine provides that an employee who uses his employer’s resources to conceive an invention or to reduce it to practice must afford to his employer a nonexclusive, royalty-free, nontransferable license to make use of the invention, even though the employee subsequently obtains a patent thereon. The shop right is not an ownership interest in the patent. Rather it constitutes a defense to a charge of patent infringement by the employee or his/her assignee.” 8 Chisum on Patents § 22.03[3].

8 See, e.g., Jesse Dukeminier et al., Property 716 ( 8th ed., Wolters Kluwer Law & Business , 2014 ) .

9 For a discussion and lively critique of this doctrine, see Carol M. Rose , Crystals and Mud in Property Law , 40 Stan. L. Rev . 577 ( 1988 ) .

10 Professor Sean O’Connor analyzes the FilmTec rule and Justice Breyer’s critique in Sean O’Connor , The Aftermath of Stanford v. Roche: Which Law of Assignments Governs? , 24 Intell. Prop. J. 29 ( 2011 ) . Professor Dennis Crouch considers these issues in the context of patent prior art in Dennis Crouch , Not-Yet Filed Invention Rights, Patently-O, December 2, 2020, https://patentlyo.com/patent/2020/12/filed-invention-rights.html .

11 For a discussion of the substance of Justice Breyer’s dissent in Stanford v. Roche , see Section 2.3 , Note 3.

12 See Parker Tresemer , Best Practices for Drafting University Technology Assignment Agreements after FilmTec, Stanford v. Roche, and Patent Reform , 2012 U. Ill. J.L. Tech. & Pol’y 347 ( 2012 ) (offering concrete proposals for the improvement of university assignment documents), Sean M. O’Connor , The Real Issue Behind Stanford v. Roche: Faulty Conceptions of University Assignment Policies Stemming from the 1947 Biddle Report , 19 Mich. Telecomm. & Tech. L. Rev. 379 , 421 ( 2013 ) (noting that “it is not clear that universities will be able or willing to impose new present assignment agreements upon their faculty without some form of consideration or shared governance consultation”). Notwithstanding the notoriety of Stanford v. Roche , not all universities appear to have gotten the message. For example, in Omni Medsci, Inc. v. Apple Inc. , 7 F.4th 1148 (Fed. Cir. 2021), the Federal Circuit held that a University of Michigan bylaw providing that intellectual property in a faculty member’s inventions “shall be the property of the University” did not automatically assign the inventor’s rights in the invention to the university. It explains that “On its face, [the clause] does not unambiguously constitute either a present automatic assignment or a promise to assign in the future. It does not say, for example, that the inventor ‘will assign’ the patent rights—language that this court has previously held to constitute an agreement to assign rather than a present assignment. Nor does it say that the inventor ‘agrees to grant and does hereby grant’ title to the patent—language that this court has previously held to constitute a present automatic assignment of a future interest. We conclude that [the clause] is most naturally read as a statement of intended disposition and a promise of a potential future assignment, not as a present automatic transfer.”

13 Dennis Crouch, Overbroad Assignment Agreement: Invalid under California Law, Patently-O, November 19, 2020, https://patentlyo.com/patent/2020/11/overbroad-assignment-california.html .

14 See Dennis Crouch, Pre-Invention Innovations Not Captured by Employment Agreement Duty to Assign, Patently-O, April 29, 2021, https://patentlyo.com/patent/2021/04/invention-innovations-employment.html .

15 Barton Beebe, Trademark Law: An Open Source Casebook, version 4.0 at Part III, 127 (2017).

16 Irene Calboli , Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone , 57 Fla. L. Rev. 771 , 776 ( 2005 ) .

17 Note that the requirement that a trademark license be accompanied by a transfer of goodwill was rejected in Dawn Donut Co. v. Hart’s Food Stores, Inc ., 267 F.2d 358 (2d Cir. 1959), discussed in Section 13.1 .

18 Milgrim on Trade Secrets, § 2.02.

19 Neil Wilkof , Joint Ownership of a Trade Mark: The Tribulations of Termination , IPKat, November 26, 2010 , https://ipkitten.blogspot.com/2010/11/joint-ownership-of-trade-mark.html .

20 See Schering Corp. v. Roussel-UCLAF SA , 104 F.3d 341, 344 (Fed. Cir. 1997) (“Each co-owner’s ownership rights carry with them the right to license others, a right that also does not require the consent of any other co-owner”).

21 See Sybersound Records, Inc. v. UAV Corp. , 517 F.3d 1137 (9th Cir. 2008).

22 See Trademark Manual of Examining Procedure (TMEP), 1201.07(b)(ii).

23 15 U.S.C. § 1052(d) (“Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons”).

24 Trademark Manual of Examining Procedure (TMEP), 501.06.

25 See, e.g., Iskenderian v. Iskenderian , 144 Cal. App. 4th 1162 (Cal. App. 2006) (trademark in family restaurant was validly transferred by late parent to three children).

26 Richard A. Posner , Intellectual Property: The Law and Economics Approach , 19 J. Econ. Persp. 57 , 70 ( 2005 ).

27 Robert P. Merges & Lawrence A. Locke , Co-ownership of Patents: A Comparative and Economic View , 72 J. Pat. & Trademark Off. Soc’y 586 ( 1990 ).

Figure 2.2 The creators of the Superman character died in near poverty while the Man of Steel went on to form a multi-billion-dollar franchise. Sections 203 and 304 of the US Copyright Act were enacted to enable authors and their heirs to terminate any copyright assignment or license between 35 and 40 years after originally made in order to permit them to share in the value of their creations.

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• Ownership and Assignment of Intellectual Property
• Jorge L. Contreras , University of Utah
• Book: Intellectual Property Licensing and Transactions
• Online publication: 21 June 2022
• Chapter DOI: https://doi.org/10.1017/9781009049436.003

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Patent Assignment Agreement

Lawyers within our network have agreed to share some of the documents they regularly use in the course of their practice along with annotations explaining different provisions and outlining decisions you might need to make. You can contact our lawyers and download a copy of this document .

This free template Patent Assignment Agreement would be used to assign some or all of the rights in an existing Patent to a third party. A Priori lawyer can help you customize it to meet your company's needs. You can learn more about the requirements to draft a legal binding Patent Assignment Agreement here , as well as when it would be more appropriate to use a Patent License Agreement . 

A lawyer is available for free consultations through Priori to discuss this document and much more.

ASSIGNMENT OF PATENT RIGHTS

_______________ to _____________

THIS ASSIGNMENT, effective the __ day of ________ 20__ by and between __________________, a _____________ residing at _____________________, (hereunder referred to as Assignor), and ____________________, a _______________ having  a place of business at ______________ (hereunder referred to as Assignee).

WHEREAS, Assignor is the owner of the entire right, title and interest in and to the patents and patent applications, and the inventions disclosed therein, (hereinafter referred to collectively as the Patent Rights) identified on the attached Schedule.

WHEREAS, Assignee is desirous of obtaining all right, title and interest in and to the inventions represented by the Patent Rights in the ________ ; and

WHEREAS, Assignor is agreeable to assigning the Patent Rights for the _____________ .

NOW, THEREFORE, for good and valuable consideration, the receipt of which is hereby acknowledged, the said Assignor has sold, assigned, transferred and set over, and by these presents does hereby sell, assign, transfer and set over, unto the said Assignee, its successors, legal representatives and assigns as of the effective date recited above, all right, title and interest in, to and under the Patent Rights in the _________ , including specifically the right to claim priority from said Patent Rights as fully and entirely as the same would have been held and enjoyed by Assignor if this assignment and sale had not been made, together with all claims for damages by reason of past infringement of the Patent Rights with the right to sue for and collect the same for Assignee’s own use and enjoyment, and for the use and enjoyment of its successors, assigns or other legal representatives.

Assignor hereby covenants that it has full right to convey the rights herein assigned, and that it has not executed, and will not execute, any agreements in conflict herewith.

This assignment may be executed in any number of counterparts, each of which will be deemed an original, but all of which together constitute one and the same instrument.  Executed signature pages to this assignment may be delivered by facsimile, or by email in portable document format (.pdf) and delivery of the signature page by such method will have the same effect as if the original signature had been delivered by the sending party to the receiving party.

IN WITNESS WHEREOF the said Assignor and Assignee have caused their respective corporate and legal names to be hereto signed.

                                         ASSIGNOR

______ __, 20__              By:__________________________

                                         Name:  _______________________

                                 Title:  ________________________  

______ __, 20__               By:__________________________

                                          Name:  _______________________ Title:  ________________________ Schedule Assignment of Patent Rights    

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Key Elements of Patent Assignment Contracts

A patent assignment contract is a complex legal document that requires careful consideration of several key elements to facilitate a valid and enforceable transfer of patent rights. The contract involves three primary parties: the assignor, assignee, and witnesses, with specific signature protocols to prevent fraud and disputes. The type and scope of patent rights being assigned, including exclusive licenses, non-exclusive licenses, and shop rights, must be clearly outlined. Additionally, the contract must specify consideration and payment terms, representations and warranties, dispute resolution provisions, termination provisions, and governing law provisions. A thorough understanding of these elements is vital to grasping the intricacies of patent assignment contracts, and a closer examination of each component reveals the nuances that can make or break a successful agreement.

Table of Contents

Parties and Signatures

A patent assignment contract typically involves three primary parties: the assignor, who is the original owner of the patent rights, the assignee, who is the party receiving the patent rights, and the witnesses, who attest to the authenticity of the signatures. These entity functions are vital in validating the contract's legitimacy and enforceability. The assignor and assignee must sign the contract, adhering to specific signature protocols to prevent fraud and disputes. The witnesses, typically two or more individuals, verify the identities of the signatories and confirm that the signatures are genuine. The witnesses' signatures serve as evidence of the contract's authenticity, providing a layer of security and trust in the transaction. The precise definition and fulfillment of these entity functions are fundamental in establishing a legally binding patent assignment contract. By understanding the distinct responsibilities of each party, parties can facilitate a smooth and efficient transfer of patent rights.

Patent Rights and Ownership

When drafting a patent assignment contract, it is crucial to clearly define the types of patent rights being transferred, as this will impact the scope of ownership and control. The ownership conveyance terms must also be meticulously outlined to facilitate a smooth handover of rights and avoid potential disputes. By establishing a thorough understanding of patent rights and ownership, parties can facilitate a successful transfer of intellectual property.

Types of Patent Rights

Patent rights, which involve the ownership and control of inventions, can be categorized into several types, each conveying distinct privileges and responsibilities to the patent holder. The primary types of patent rights include exclusive and non-exclusive licenses. An exclusive license grants the licensee the sole right to exploit the patented invention, whereas a non-exclusive license allows the patent holder to license the invention to multiple parties. Another type of patent right is the shop right, which permits the employer to use an employee's invention without compensation. Patent trolls, entities that acquire patents solely for the purpose of litigation, often exploit these rights to assert claims against unsuspecting infringers. Additionally, patent rights can be further classified as assignable or non-assignable, with the former allowing the patent holder to transfer ownership and the latter restricting such transfers. Understanding these types of patent rights is essential in drafting effective patent assignment contracts that accurately reflect the parties' intentions and protect their interests.

Ownership Transfer Terms

Several key considerations must be addressed in defining ownership transfer terms, as they delineate the scope of rights and liabilities transferred from the assignor to the assignee. These terms should explicitly outline the nature and extent of the patent rights being transferred, including any restrictions or limitations. Additionally, the ownership transfer terms should identify the entity jurisdiction responsible for managing the patent assets, providing clarity on the governing laws and regulations applicable to the assignment.

Asset classification is also a critical aspect of ownership transfer terms, as it determines the type of patent rights being transferred. For instance, the assignment may involve the transfer of entire patent rights, partial rights, or specific claims. The terms should clearly categorize the patent assets being transferred, making certain that both parties are aware of the scope of the assignment. By defining these vital elements, the ownership transfer terms provide a clear understanding of the patent rights and liabilities transferred, mitigating potential disputes and facilitating a smooth transfer of ownership.

Consideration and Payment Terms

The terms of consideration and payment, a critical aspect of patent assignment contracts, outline the compensation or value exchanged between the assignor and assignee in return for the transfer of patent rights. This section of the contract defines the monetary obligations of the assignee, specifying the amount and timing of payments to be made to the assignor.

Payment schedules are often negotiated to provide a clear understanding of the payment terms, including the amount, frequency, and duration of payments. These schedules may include milestone payments, royalties, or lump-sum payments, depending on the agreement reached between the parties. The contract should also specify the payment method, such as wire transfer or check, and the currency in which payments will be made.

In addition to payment schedules, the contract should outline the assignee's monetary obligations, including any penalties or late fees associated with missed payments. The consideration and payment terms should be carefully drafted to confirm that both parties are clear on their obligations and that the contract is enforceable. By clearly defining these terms, the parties can avoid disputes and facilitate a smooth transfer of patent rights.

Alternatively, you could replace "ensure" with "guarantee", "certify", "verify", or "establish", depending on the context.

Representations and Warranties

Typically, representations and warranties form a crucial component of patent assignment contracts, as they establish the liabilities and obligations of both the assignor and assignee regarding the validity, ownership, and usability of the patent rights being transferred. These provisions allocate risk between the parties, guaranteeing that the assignor discloses all relevant information about the patent and the assignee is aware of any potential issues. A thorough representation and warranty provision should include statements regarding the patent's validity, ownership, and freedom from encumbrances, as well as the assignor's right to assign the patent. Additionally, the assignor may provide a risk disclosure statement, outlining any known or potential risks associated with the patent, such as ongoing or potential litigation. The assignor should also disclose its litigation history related to the patent, including any pending or threatened lawsuits. By including these representations and warranties, the parties can facilitate a transparent and informed transaction, minimizing the risk of disputes and misunderstandings.

Dispute Resolution Provisions

In the event of disagreements or disputes arising from the patent assignment contract, dispute resolution provisions serve as a vital mechanism for resolving conflicts in a timely and cost-effective manner. These provisions outline the procedures to be followed in the event of a dispute, facilitating that parties are aware of the process and can plan accordingly. Arbitration clauses are commonly included in patent assignment contracts, providing a binding and final resolution to disputes. These clauses typically specify the arbitration forum, the number of arbitrators, and the governing law. Mediation processes may also be included, providing a non-binding and confidential forum for parties to negotiate a settlement. The inclusion of dispute resolution provisions can help to reduce the risk of costly and time-consuming litigation, while also promoting a more collaborative and efficient resolution process. By clearly outlining the procedures for dispute resolution, parties can concentrate on the substance of the dispute rather than the process, ultimately facilitating a more efficient and effective resolution.

Termination and Governing Law

Under patent assignment contracts, termination provisions define the circumstances and procedures for terminating the agreement, while governing law provisions specify the jurisdiction whose laws will govern the interpretation and enforcement of the contract. These provisions are vital in making certain that both parties are aware of their rights and obligations in the event of termination or disputes.

Termination provisions typically outline the grounds for termination, such as material breach, bankruptcy, or insolvency. The consequences of breach, including any damages or penalties, should also be clearly stated. Governing law provisions, on the other hand, address jurisdictional issues by specifying the laws of which jurisdiction will apply in case of disputes or litigation. This is key in avoiding conflicts of laws and making certain that the contract is enforced consistently.

It is imperative to carefully draft these provisions to avoid ambiguity and confirm that the parties' intentions are reflected. Failure to do so may lead to disputes and litigation, which can be costly and time-consuming. By including clear termination and governing law provisions, parties can minimize the risk of disputes and guarantee a smooth and efficient contract administration.

Frequently Asked Questions

Can a patent assignment contract be verbal or must it be in writing?.

While oral agreements may be considered valid, patent assignments typically require a written instrument to provide clarity and specificity, as implied consent may not suffice to convey ownership rights and obligations.

What Happens if the Assignor Becomes Bankrupt After Signing the Agreement?

In the event of assignor bankruptcy, patent assignment agreements may be subject to bankruptcy implications, potentially jeopardizing asset protection. The assignee's rights may be affected, and the patent's validity could be challenged, necessitating careful drafting and due diligence to mitigate risks.

Can Patent Assignments Be Recorded in Multiple Countries Simultaneously?

Simultaneous filing of patent assignments is possible, allowing for global reach and uniformity in intellectual property rights. This approach enables assignees to secure protection in multiple jurisdictions concurrently, streamlining the assignment process and maximizing international patent portfolio management.

Are Patent Assignment Contracts Subject to Taxes or Stamp Duties?

Patent assignment contracts may be subject to taxes or stamp duties, depending on jurisdiction, with varying tax implications and potential duty exemptions, necessitating thorough examination of local laws to guarantee compliance and minimize costs.

Can a Patent Assignment Contract Be Amended or Updated Later?

A patent assignment contract can be amended or updated later, but only with the mutual consent of all parties involved, highlighting the importance of contract flexibility to accommodate evolving circumstances and interests.

Windows on Arm finally has legs

Microsoft and qualcomm have convinced software developers to lean into their latest arm push..

By Tom Warren , a senior editor and author of Notepad , who has been covering all things Microsoft, PC, and tech for over 20 years.

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When I first used the Arm-powered Surface Pro X in 2019, I loved the hardware but disliked the software experience . Everything felt like it was lagging. Microsoft didn’t have native versions of Edge or its Office apps, and it was clear the Surface Pro X had been released too early. With little support from developers, Windows on Arm was unlikely to succeed.

Nearly five years later, the Windows on Arm experience has improved dramatically. Qualcomm’s new Snapdragon X Elite and X Plus processors deliver a Windows 11 experience that feels like any regular laptop. Microsoft and Qualcomm have also been pushing software developers to create more ARM64 native apps, and it has made a huge difference.

Apps like Photoshop, Dropbox, and Zoom are all native, as are entertainment apps like Spotify, Prime, and Hulu. Even Chrome, Opera, Firefox, Vivaldi, Edge, and Brave are all on Arm now. That’s a good start, but there are still many apps that will have to be emulated on these latest Copilot Plus PCs, which is where Microsoft’s Prism emulator comes in.

Microsoft claims Prism is as efficient as Apple’s Rosetta 2 translation layer and can emulate apps twice as fast as the previous generation of Windows on Arm devices. I’ve been testing the Surface Laptop over the past week and haven’t run into the erratic behavior I saw on Microsoft’s previous emulator, which also impacted battery life on the Surface Pro X. But I also haven’t seen the dramatic improvements in emulated app performance that Microsoft promised.

Microsoft’s claims are difficult to test without comparing previous Arm-based devices. YouTuber Gary Explains did exactly that , comparing the x86 or x64 versions of Firefox, Cinebench R23, and HandBrake on a Surface Pro X without Prism and then with the latest Windows 11 24H2 update that includes Prism.

Gary Explains found that Prism gave a 10 percent performance improvement in Speedometer 3 running on Firefox, an 8 percent jump in Cinebench R23 single core, and a 4.5 percent improvement in Cinebench R23 multicore compared to the previous emulator. HandBrake performance also improved by 8 percent thanks to Prism.

In my own testing, I’ve found that Prism handles compatibility for non-native apps well, but the performance varies depending on the complexity of the app. ShareX, a screenshot tool, works fine using the Prism emulator, but it’s a lightweight app. iA Writer and Notion aren’t native, but they run well on these latest Snapdragon chips, too. Discord also performs a lot better than I’ve seen on Arm in the past, but there’s still some occasional stuttering and a slight lag navigating between servers.

For more heavyweight apps, Prism doesn’t bring the experience up to what you’d find on an Intel- or AMD-powered laptop. Adobe’s Premiere Pro running emulated was practically unusable for editing a 4K video on the Surface Laptop, which is probably why Adobe is now blocking the installation of the x64 version on Snapdragon X Elite and Plus processors. An ARM64 version of Premiere Pro is planned for later this year.

Blender is another example of an emulated app with underwhelming performance. Blender doesn’t detect Qualcomm’s Adreno GPU, so everything hits the CPU instead. The performance for rendering projects is terrible as a result, with one test I performed taking more than 15 minutes to complete, compared to just over two minutes on a 13-inch MacBook Air M3. Blender will soon have a native ARM64 version, but I tested the early alpha copy, and it only marginally improved the results because it’s still not picking up the GPU correctly.

Intel has dominated the laptop GPU market with its integrated solutions for decades, so I suspect Qualcomm still needs to engage with developers of software like Blender to ensure apps are optimized for its GPUs. Blender illustrates that Microsoft’s Prism emulator can’t solve everything.

Speaking of GPUs, games also don’t “just work” on the Snapdragon X Elite and X Plus, despite Qualcomm’s assurances. I didn’t make a big deal out of this for the Surface Laptop review because it’s not a gaming laptop, but gaming on Windows on Arm is disappointing right now. Shadow of the Tomb Raider kept crashing for me when I attempted to play, and most of the other games I tried just refused to launch. Fall Guys throws up an unsupported error, as does Halo Infinite . Destiny 2 didn’t even launch — no error, just a whole lot of nothing. Starfield did the same.

There aren’t many native Windows on Arm games, so Prism has its work cut out for it here. I managed to get Grand Theft Auto V working but with lots of frame stuttering. Cyberpunk 2077 also ran on the Surface Laptop 7th Edition but at around 26fps on average at low settings on 1080p resolution. The Witcher 3 , Baldur’s Gate 3 , Control , Rocket League , and Minecraft all worked out of the box, too.

The biggest issue here is that most anticheat services use kernel drivers that aren’t supported by emulation . BattlEye, a widely used anticheat service, is one of the rare exceptions that supports Windows on Arm, but it seems games like Destiny 2 that utilize this anticheat software will need to be updated to run properly here. Thankfully, there is a dedicated website that tracks which games are supported and run well. I’m not holding out much hope for Arm-powered gaming laptops anytime soon, though.

Another thing I’ve run into is apps just refusing to install. Google Drive is the big one here, as it throws up an error about the Windows architecture of Copilot Plus PCs not being supported. Google’s Drive app on Windows integrates into the shell much like Dropbox, which is something Microsoft didn’t originally support on Windows on Arm. There is, however, a native version of Dropbox that integrates into File Explorer, so hopefully Google is able to deliver a similar experience soon.

There are compatibility issues with external devices, too. I’ve seen reports about Brother printers and scanners not working well on Arm or simply that generic printer drivers don’t support all of the features you’d expect. There’s no easy quick fix for accessories that require driver support, and that’s only likely to come based on the sheer amount of people using these new Copilot Plus PCs. I’m less concerned about the driver issues here because I think most people will be able to plug in the type of accessories (webcams, printers, storage drives) you use on a laptop and have them up and running with the built-in drivers in Windows 11.

VPN apps are still an issue on Windows Arm, too. Bitdefender, NordVPN, and Private Internet Access don’t work. VPN developers use TAP and TUN virtual adapters and devices and need a signed driver from Microsoft to work correctly. Fortunately, Android Authority reports that VPN developers are working on ARM64 versions.

That’s encouraging because the last time I used Windows on Arm regularly in 2019 , I said, “Most of the apps I use on a daily basis haven’t been recompiled for ARM and probably never will be.” Now, it feels like app compatibility on Windows on Arm is changing on a daily basis, which is a scenario I wasn’t expecting to see five years ago.

While we’re in this transition point, you may need to use beta versions or download special builds of Windows apps that are ARM64 native — much like the macOS transition. That means the Windows Store versions of apps aren’t always ARM64, and you might be able to find the improved version on the web before the app store version is updated. That was the case initially with Slack earlier this month before the store version got updated.

For everything else, Microsoft does have some tools for power users that might improve app compatibility on Arm with existing unmodified x86 or x64 apps. There’s a program compatibility troubleshooter that can help enable or disable emulation settings, and you can also toggle these in the properties of an executable. You can control things like hybrid execution mode to force the use of x86-only binaries, disable floating point optimization that could impact performance, and much more. You can also modify how an emulated app uses multiple CPU cores, which might improve performance or compatibility in certain apps.

Ultimately, it’s down to app developers to focus on native ARM64 support for their apps. The sheer amount of native apps that are now available shows things are heading in the right direction. These new Qualcomm chips also provide the brute-force power to emulate apps a little better, alongside Microsoft’s Prism improvements. Day to day, I think most people won’t even run into app issues here because a lot of the key apps are already native or run well in emulation.

I’m confident a lot more ARM64 apps are still on the way. During my testing, benchmark tools and apps were updated to support ARM64, catching me by surprise. I’m willing to bet that we won’t be discussing Prism or emulated app performance as much in a year or two because native ARM64 apps will be as common as x64 apps are today after the transition from x86 began in the early 2000s. After 12 years of attempts to transition to Windows on Arm, it feels like Microsoft is finally about to succeed.

Notepad by Tom Warren /

A weekly newsletter uncovering the secrets and strategy behind Microsoft’s era-defining bets on AI, gaming, and computing.

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Book Pirates and Copycats: Infringement That Speaks For Itself

The aim of this writing is to have clearer understanding on: (i) basic principles of copyright; (ii) general provisions on assignment, license, and testamentary disposition in the form of legal protection of books as protected works; and (iii) the distinctive characteristics between copyright, trade marks and patents. The results are, first, Copyright Act promotes the underlying principle of creations of persons minds (human works and intellect). In order to be protected, any works must be produced or originated by labour, skill, judgement and efforts of a person that requires intellect and intellectual process of thought. Having the fact that each person has different dimension and degree of cipta (produce) , rasa (sense) , and karsa (objective). Under declarative principle and first-to-create-system, automatic protection is given therefore registration is not cumpolsory, but optional. To satisfy evidence and proof of the creations, all titles may be registered in the copyright register and it shall be prelimenary proof of copyright.on the other hand, trademark, patent and industrial design applies first-to-file-system and protect temporary in terms of time period. Second, assignment is basicaly the right of the owner of the copyright to grant limited interest to another person through a writted agreement. Unlike an assignment, license ony permits one to do an act which would be unlawful without the license. Third, since the trademark law adopts firs-to-file-system, an unregistered trademark is not protected. However, no person can ‘pass off’ his product as that of someone else. Such ‘passing off” is a civil wrong and the owner of the original trade mark can sue the imitator and claim compesation from him. The owner of a registered trade mark can use both remedies. The Patent Law deals with inventions of products and process. Such inventions can be registered with the registrar of patents and the inventor then gets exclusive rights. There are certain inventions cannot be registered. Frivolous inventions, those whose use would be contrary to law and morality or injurious to public health are in such category. The Law of Industrial Design protects designs include shape, configuration, patterns or ornament applied to any article by manual, chemical or industrial process. They are judged solely by the eye. While the design is part of an article, trademark is not.

Fajar Sugianto, Tomy Michael, Afdhal Mahatta. “Konstelasi Perkembangan Hermeneutika Dalam Filsafat Ilmu Atribusi Metode Penafsiran Hukum.” The Cambridge Companion to Gadamer , 2007, 36–51.

Gilardi, Filippo, Andrew White, Zhen Troy Chen, Shuxin Cheng, Wei Song, Filippo Gilardi, Andrew White, et al. “From Copycat to Copyright : Intellectual Property Amendments and the Development of Chinese Online Video Industries ABSTRACT.” International Journal of Cultural Policy 29, no. 2 (2023): 152–68. https://doi.org/10.1080/10286632.2022.2040494.

Locke, John. Two Treatises of Government . Edited by Peter Laslett. London: Cambridge University Press, 1988.

Oguz, By Ezgi, and Jamie Marsden. “Defending Against Copycat Packaging : The Role of Design from a Consumer ’ s Perspective” 9, no. 1 (2023): 73–90.

Sugianto, Fajar; Indradewi A, Astrid; Valencia, Claresta Devina. “BETWEEN VALUATION AND MONETIZATION OF EFFICIENCY IN ECONOMIC ANALYSIS OF LAW : IS IT POSSIBLE ? Fajar SUGIANTO Astrid Athina INDRADEWI Keywords :” Journal of International Trade, Logistics and Law 10 (2024): 286–94.

Sugianto, Fajar. “EFISIENSI EKONOMI SEBAGAI REMEDY HUKUM” 9, no. 18 (2013): 61–72.

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Transferring ownership/ Assignments FAQs

Assignment Center has replaced the Electronic Patent Application System (EPAS) and Electronic Trademark Assignment System (ETAS). Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. 

See our how-to guides on using Assignment Center for   patents  and  trademarks . If you have questions, email  [email protected]  or call customer service at 800-972-6382.

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Transferring Ownership / Assignments

• Transferring Ownership / Assignments, Procedures

The Assignment Recordation Branch in the Public Records Division processes and records assignment documents for both patent and trademark properties.

Essentially the rules:

(1) specify the minimum information about the transaction that must be submitted;

(2) require submitters to submit this information of a separate cover sheet; and

(3) specify that submissions must be legible and of such quality to permit processing; and

(4) pay the proper recording fee.

The rules permit submission of true copies of assignment-related documents; original documents are not required nor desired, as they will not be returned.

You may contact the Assignment Center customer service desk at 571-272-3350 from 8:30 a.m. to 5 pm ET Mondays through Fridays, except on federal holidays. You may e-mail questions about electronic filing to [email protected] .

Payment may be made by use of a check, credit card, money order or USPTO deposit account if submitting documents in paper. Trademark assignments submitted electronically may be paid by credit card, USPTO deposit account or electronic fund transfer (EFT). The USPTO accepts VISA, MASTERCARD, AMERICAN EXPRESS and DISCOVER credit cards.

>> see How to Pay Fees for a current fee schedule and for more about fee payments

No. All documents that meet the minimum requirement in 37 CFR 3 are processed and recorded. Persons buying or selling properties should be sure that there is an accurate chain of title in place before submitting recordation requests.

No, these forms are not mandatory. However, the USPTO strongly encourages their use. Completing the forms in their entirety ensures that all the required information for recordation has been sent to the office. The forms are available in PDF-fillable format on the USPTO Forms page , thus making them quick and easy to prepare.

When these forms are received in the USPTO, they are scanned along with the supporting documentation. The bibliographic data from the cover sheet is then entered into the PTAS system and the documents are processed.

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Texas Rangers Add Josh Sborz, Place Dane Dunning On IL As Josh Smith Deals With Glute Injury

Stefan stevenson | 17 hours ago.

• Texas Rangers
• Tampa Bay Rays

ARLINGTON — Reliever Josh Sborz rejoined the Texas Rangers bullpen and Dane Dunning was sent to the injured list with right shoulder soreness before Friday's series opener against the Tampa Bay Rays.

Sborz, who had been on the IL since May 9 with a right rotator cuff, missed 48 games. It was his second time this season to go on the IL with the injury.

Dunning was previously on the 15-day IL from May 5-22 with a right rotator cuff strain.

"I don't think it'll be long," Rangers manager Bruce Bochy said of Dunning's IL stint. "His stuff was down a little bit last game. We just want to give him time to get that cleared up."

Dunning allowed two runs on three hits in 2 1/3 innings in his last appearance on Wednesday.

Bochy chalked the IL move as a normal chance to give a pitcher some arm rest.

"Occasionally, they'll do this, just to rest of them up, and that's the case with Dane right now," he said. "I think he'll be fine when that time is up [July 19]. Meanwhile, it's great to have Sborzy here. He's been a big part of this club. Another high-leverage guy, so I'm excited to have him back."

Infielder Josh Smith needs a game or two to ease some left glute tightness. The same injury forced Smith out of the lineup a few weeks ago. Smith said his over-the-should catch in Thursday's game has nothing to do with his glute issue.

"It got a lot better, and then the past two days, the first couple of times sprinting to first I started feeling it. And after [Thursday's] game it got much worse," Smith said. "It hurts more when I decelerate and stop running. It kind of tightened up in that situation."

Smith doesn't think it's anything too serious and is available to pinch-hit Friday, but Bochy did leave open the possibility that an IL stint may be necessary, especially since it's a recurring issue for Smith.

"That's always a concern," Bochy said. "I can't say how bad [his injury is] yet. I think tomorrow we'll have a better idea. He's getting treatment. It's similar to what we've done with Josh Jung, we backed him off. We always have the possibility he may have to go to the IL. I hope not, but sure it's a possibility."

The @Rangers stellar defense continues 😮 Josh Smith makes the over-the-shoulder diving grab! pic.twitter.com/J1d3j9m87T — MLB (@MLB) July 4, 2024

You can follow Stefan Stevenson on X @StefanVersusTex .

Catch up with Inside the Rangers on Facebook and X .

STEFAN STEVENSON

Stefan Stevenson worked as a journalist and editor at the Fort Worth Star-Telegram for 25 years, covering sports, concerts, and general news. His beats have included the Dallas Cowboys, the Texas Rangers, and Texas Christian University football.

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