Assignment Of Patent Rights
Patent applications can be assigned or bequeathed, in whole or in part (Patent Act s.
Once assigned, the application cannot be withdrawn without the permission of the assignee (Patent Act s. Patents can be assigned in law, in whole or in part, by a written document (Patent Act s. The co-owner of a patent cannot divide his part ownership into two or more parts without the concurrence of all owners of the patent (Forget v. The Federal Court of Canada has jurisdiction to change the records of the Patent Office respecting title to a patent to vary or expunge an entry (Patent Act s.
I would argue, as did Justice Sotomayor’s concurring opinion and Justice Breyer’s dissenting opinion (joined by Justice Ginsburg) that a “yes” answer to that question defies logic, reason, and prior case precedent (other than the Federal Circuit’s 1991 case of whose logic, reasoning, and adherence to prior case precedent was challenged by both Justice Sotomayor’s concurring opinion, as well as Justice Breyer’s dissenting opinion).
What plagues the Supreme Court’s decision in the case (and which Justice Breyer aptly notes in his dissenting opinion) is what, exactly, is the correct factual record?
In particular: (1) in what chronological order did the Stanford University Assignment Obligation and the Cetus Assignment Clause occur?
; (2) when did Stanford University get the federal funding for the research that Holodniy allegedly did for them, versus when were Holodniy’s research activities carried out at Cetus after he signed Cetus’ “Visitor’s Confidentiality Agreement” (“VCA”) with the Cetus Assignment Clause?
, I suggested the Federal Circuit “still doesn’t get it” on how title to “subject inventions” works under Bayh-Dole.
This recognised the fact that someone who is good at coming up with ideas is not necessarily the best person to bring those ideas to market." In the United States, assignment of a patent is governed by statute.My original view was that the title to the “subject inventions” (i.e., those resulting from federally sponsored research) initially resided with the organization (e.g., Stanford University) which carried out the sponsored research.I now confess that I, like Stanford University, overstated how Bayh-Dole works with regard to title to “subject inventions.” In affirming the Federal Circuit, a majority of the Supreme Court (6 Justices) later ruled that Bayh-Dole “does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.” See head notes to the Supreme Court’s slip opinion.But I do give him significant credit in recognizing that Bayh-Dole does evidence a “scheme,” or as he calls it, “a hierarchy,” for how ownership of invention/patent rights is (or should be) allocated for federally funded research: (1) first, to the funded organization; (2) next, to the federal government; and (3) last, to the employee/researcher.In other word, Bayh-Dole provides a “pecking order” for who gets the first claim to ownership of those rights, similar to a “right of first refusal” in a license agreement.With this complex / muddled / unclear factual record before it, 6 Justices of the Supreme Court agreed in that Bayh-Dole doesn’t automatically cause a transfer of invention rights that might be based on federally funded research to the contractor / grantor (e.g., Stanford University); even those rights must be assigned (be it by written assignment, agreement to assign, or some “operation of law” other than Bayh-Dole) by the inventor / researcher to the contractor/grantor.But what those 6 Justices didn’t address in case that title to the HIV RNA assay invention belonged ultimately to Roche.case that is glossed over (or at least not addressed directly) by the Supreme Court majority (as well as others in the patent “blogosphere”) is what happens when you have a present assignment (or at least a contractual obligation to assign) of invention rights that don’t exist at the time of the assignment (aka “future invention rights”).Should (as the Federal Circuit held) Roche (or more appropriately its predecessor, Cetus) by using the language “I will assign and do hereby assign” (aka the “Cetus Assignment Clause”) trump what may have been an earlier obligation by a Stanford University researcher (Mark Holodniy) to assign invention rights to Stanford University (aka the “Stanford University Assignment Obligation”)?A transfer of patent or patent application can be the result of a financial transaction, such as an assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in an inheritance process, or in a bankruptcy.The rationale behind the transferability of patents and patent applications is that it enables inventors to sell their rights and to let other people manage these intellectual property assets both on the valuation and enforcement fronts.