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[rkakkad]

Hello.

I had 2 questions.

A company file for a  patent through an employee who was an inventor, and the company features on the application as an assignee.
I wanted to know if there's any way this assignee'ship
can be denied, and how can the company find this out?

also, if the company does not feature as an assignee in the application, then how can this be included later and how can the company verify the same?

and secondly,
if an employee leaves a company and tries to patent  some IP which was developed at the company but not yet patented, what steps can be taken by the company to recover the lost IP?

thanks alot!

Regards,
Ram.

[Wiscagent]

Under United States law patents are applied for by the inventors; i.e. persons, not businesses.  So the default owner of a patent is the inventor.

Typically, employees of businesses sign contracts that transfer ownership of the patent to the business; in other words the patent is assigned to the business.  These contracts would normally include any work done by the employee that relates to the business - regardless of when the patent application is actually signed.  Depending on the details of the situation, even in the absence of such a contract the business may have rights to the patent.  In the United States the patent office records assignments – but disputes regarding patent assignments are normally handled in state courts.

In some other countries the business actually applies for and is granted the patent, not the inventor.

If your question relates to a particular situation that is important to you, you should contact an attorney.


Richard Tanzer

[rkakkad]

Thanks for the info..
but what can the company do if ...
the employee does not assign the company the assignee status..
but if the inventor had signed the assignee contract at the time of joining the company.
can the company make use of this document and get the assignee status from the USPTO (without cooperation from the inventor), instead of having to go through the legal tangle with the state?
keeping in mind that the prosecution of the patent application is all ready being carried out by the inventor.

[JimIvey]

I'll just add to Richard's answer slightly.

Transfers of property are governed by state law here in the U.S.  Typically, when someone sells property (such as a patent) to multiple purchasers, the last bona fide purchaser without notice of any prior sale is the legal owner of the property.

To protect against this, the company should record its assignment with the USPTO to provide constructive notice to the world (and prevent any subsequent assignments of the same application from having effect).  Recording an assignment is very straight forward and any practitioner should be able to help you with that.

As for the last question, what to do when the inventor refuses to assign the application, I've been lucky enough to avoid that situation, so I'm probably not the best person to answer that.  Unfortunately, it doesn't involve patent law so I'm not sure who here can answer that question for you.  It comes down to state contract/employment law and I suppose a state law litigator could tell you what sort of relief you might get.  Whatever result you get could be recorded like an assignment document with the USPTO to publicize the company's legitimate ownership of the application.

Regards.

[Isaac]

I think for patents, the recording rule is governed by federal
law (35 USC 261) rather than state law.  But the rule is exactly
as Mr. Ivey states.  If the purchaser does not record the
transfer with the PTO, he risks a loss of his rights to a later
purchaser who does record.

[rkakkad]

Thanks alot Richard, Jim and Isaac,
can you'll help me out with any information in the case of when the inventor is not cooperating with the company where he was employed at  the time of invention,
say for eg.
if the inventor has left the company after the invention is complete.
even though this does come under the purview of contract violation,  is there any way the company can  avoid bringing the state in an get assignee status w/o cooperation of the inventor, say by proving to the USPTO that the invention was made with their resources and they have the contract with the assignment clause signed by the inventor at the time of employment.

Thanks,
Ram.

[Isaac]

I don't believe there is an easy way to handle this problem.
One of the proposed modifications to patent law involves making it
easier for assignees to apply for patents in this situation.  The
proposal is to allow assignees to apply when the inventor is
obligated to assign the patent.

[Wiscagent]

Ram-

I agree with Isaac there is not an easy way to handle this problem.  Actually there are two problems:

1) filing the patent application without the uncooperative inventor’s signature.
2) assigning the uncooperative inventor’s interest in the patent to the company.

Regarding filing the patent application without the uncooperative inventor’s signature, the procedure is outlined in 37 USC 1.47, Filing when an inventor refuses to sign or cannot be reached:

    (a) If a joint inventor refuses to join in an application
    for patent ..., the application may be made by the
    other inventor on behalf of himself or herself and the
    nonsigning inventor. The oath or declaration in such
    an application must be accompanied by a petition
    including proof of the pertinent facts, the fee ...

1.47(b) is similar, it applies whenever all of the inventors refuse to execute an application for patent or cannot be found.  Both (a) and (b) involve preparing a petition with supporting documentation, such as the inventor’s employment contract.

Regarding assignment of the uncooperative inventor’s interest in the patent to the company, according to 37 CFR 3.31 the paperwork to submit patent assignment documents to the USPTO includes:

    1) name of the party conveying the interest [the uncooperative inventor];
    2) name and address of the party receiving the interest [the company];
    3) description of the interest conveyed [whole, partial] ;
    4) identification of the interests involved [application  number];
    5) correspondence address;
    6) date signed; and
    7) the signature of the party submitting the document [could be the agent or attorney].

It appears that the assignment papers can be submitted without the inventor’s signature.  Normally, regardless of any employment contract the inventor has already signed, the inventor also signs the assignment papers for each application.  If submitting the assignment papers without the uncooperative inventor’s signature it might be a good idea to provide an explanation and supporting documentation.

In summary - it’s a nuisance, but the company can go ahead and file the app’ and get it assigned to them without the uncooperative inventor’s help.


Richard Tanzer

[JimIvey]

I think Richard's correct that the PTO will record just about any document.  I have no idea if recording an unsigned assignment is sufficient to have the purported assignee listed as such on the patent when it issues.

I have to admit that I'm a bit skeptical that an unsigned assignment, without more, would be effective in actually vesting ownership of the patent and/or application in the purported assignee.

However, this is all contract law and I'm not an expert in contract law by any stretch of the imagination.

Regards.