Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: Foreign *deceased* inventor; invention created outside US; applicant filing US  (Read 1306 times)

EvilLost

  • Newbie
  • *
  • Posts: 7
    • View Profile

Hey all,

I'm in a bit of a strange situation I have never encountered before and I'm struggling to find the right answer. Here is the situation:

-Inventor lives and works in ISRAEL (for a US company).
-Invention was made in ISRAEL.
-EP application already filed.
-PCT (in RO/US) filed claiming priority to EP application.
-Inventor died before any documents were signed (no oath/assignment).   For the oath, there are clear MPEP rules and this was an easy fix.
-Employment agreement obligates inventor to assign inventions to Company.
-Company is filing for a US Patent on the invention.

Under Israeli and EP law, the rights to the patent *automatically* go to the Company (no assignment is needed). Of course, under US law, the rights pass to his heir (who is then obligated to assign to Company).

QUESTION:
How do I properly perfect this assignment in the US?



My gut feeling is that, since US law passes "US patent rights" to the heir, I can ignore Israeli and EP law and should ask the heir for an assignment to Company. Is this correct? Other attorneys in my firm think that since the EP law already gave the rights to Company, no such assignment is needed. I don't think US law cares about other jursidictions though.

I can treat this scenario the same as a US inventor that died before assigning his rights.....correct?

If it matters, there is a joint inventor (also from Israel) that is alive and has already assigned his rights to Company.

Thanks much!

« Last Edit: 01-23-18 at 01:07 pm by EvilLost »
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 995
    • View Profile

Not sure why you mentioned Europe since really only Israel is at issue here, but note it is not quite correct to make a blanket statement that "Under Israeli and EP law, the rights to the patent *automatically* go to the Company".

It might be more correct to say that under Israeli law and certain national laws in Europe, the invention rights go to the employer.  There are countries in Europe where the rights first vest in the inventor, as in the US (Germany and I think Austria are examples of this) and there are countries where inventions immediately vest in the employer (Switzerland is one that I know of).

Getting to your specific question, you may need to dig a bit further.

For example, what choice of laws provision was in the employment contract?  Did it state the laws of Israel were binding?  Or the laws of some US state?

Even if it said the laws of some US state were controlling, is that "legal" (permissible under Israel's laws and public policy) for an Israeli living and working in Israel?   As an analogy, I am pretty sure that a German working in Germany, even if working for a US company, does not (can not) give up his rights under German national inventorship laws by means of his employment contract.

If the contract stated laws of Israel as controlling, I think your colleagues are correct (except again I don't know why you mention "the EP law", rather than Israel) and the invention is automatically owned by the employer.  My impression is that you should be able to record the assignment using a redacted version of the employment contract (take out personal financial info).

If it stated US laws control, then I'm less sure (even if you have a good argument that having such a contract is contrary to the laws of Israel).

But I have another question on the wording of the contract.  Did it say that employees agreed that they would (future tense) assign inventions? 

Or did it use the present tense language such as "I agree to assign and I do hereby assign inventions"?   If so, see this thread linked about using the employment contract (redacted of financial info) as the assignment to record at PTO.

http://www.intelproplaw.com/ip_forum/index.php/topic,28009.msg128002.html#msg128002

If the employment contract only had future tense language regarding assignment, and if US law truly controls, then just in my opinion this is the only situation where you have to go bug the grieving widow for an assignment.


Logged

EvilLost

  • Newbie
  • *
  • Posts: 7
    • View Profile

Thanks for your response. 

I mentioned EP only for completeness since the parent application is an EP application (and someone from my office said that since the rights to the parent are vested in Company, all subsequent rights should also be vested....but I don't think this is correct as the patents are from entirely different jursidictions which have no control over eachother). 

I think you are correct that I cannot override local rules via contract. If I enter into a contract with an Israeli choice of law, I think such a contract would create an "obligation to assign" (the US patent) but not an "automatic assignment" even if israeli law does so automatically (for israeli patents) because otherwise my contract could override US statutes/case law (that is, I can use israeli choice of law and apply it to us patents).



I will check the employment agreement for a "present tense" assignment of future rights. If not, the widow it is...
« Last Edit: 01-24-18 at 09:52 am by EvilLost »
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 995
    • View Profile

Note i asked the forum a follow-on question (link below) specific to the action of national laws as they may relate to automatic assignment, and what happens upon the patent entering the US.  Bart answered (if you're not familiar with him, he's a great resource) saying essentially that although the company may own via action of national law, the various receiving offices (including US) may set their own requirements for proving out that entitlement. 

The most direct and bullet proof way to do so being an actual assignment.  And despite what I said above (at the time mainly thinking about showing ownership to the PTO), it may be best to have an actual assignment in the case of litigation.  I don't know if any cases have come up in litigation where the plaintiff's ownership was questioned on the basis of using the employment agreement to show ownership.

We do have a few litigators who comment from time-to-time.  It'd be great if one of them could chime in. 

http://www.intelproplaw.com/ip_forum/index.php/topic,30393.msg140774/topicseen.html#msg140774

Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.078 seconds with 20 queries.