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Author Topic: Intra-company Assignments  (Read 499 times)


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Intra-company Assignments
« on: 12-07-17 at 02:39 pm »

Concerning assignments between entities ultimately owned by the same parent company, can an employee of a subsidiary assign he/her rights directly to the parent company?  Or, assuming the employee has an obligation to assign to the subsidiary (via an employment agreement or merely as function of role of employee), MUST there first be an assignment from employee to subsidiary and then a subsequent assignment from subsidiary to parent?

Does the subsidiary being a US entity and the parent being a foreign entity change the calculus?

Thanks in advance -


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Re: Intra-company Assignments
« Reply #1 on: 12-07-17 at 06:03 pm »

Assuming the employment agreement has the employee owing invention rights to the employing subsidiary (which is typical), it seems the best practice is to utilize a 2-step assignment process.

I don't know if this is a "MUST" or not.  But in litigation, someone could cast doubt on the validity of a direct-to-parent assignment, and if their view was upheld, the parent does not have the right to sue.  Because the employee assigned in breach of his contractual obligation. 

Years later in the US (at time of litigation), if the employee cannot be located, my guess is that a sort of a confirmatory assignment from the subsidiary (which was actually owed the rights) to the parent might correct the situation.  But I think outside the US some courts might not accept this.

Edit: Oops, forgot your other question. I don't think US or foreign entity matters.  Except if US-US, one solution is to make R&D funded by the US IP holding subsidiary and make all R&D personnel employees of that same sub, such that their obligations properly flow directly to it. 
« Last Edit: 12-07-17 at 06:07 pm by Tobmapsatonmi »


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