[Patentpractice] "advance" Inventor Declaration in Employment Contracts

[Patent Lawyer]

I think that an employee agreement should include an obligation to sign documents in the future, including any required to perfect intellectual property rights.

BUT, I they cannot pre-sign a declaration.

Look at 37 CFR 1.63<https://www.law.cornell.edu/cfr/text/37/1.63> (assuming you file the declaration with an application data sheet – ADS).

Under 1.63(2), you cannot identify the application until it has been prepared ("attached hereto") or filed.

Under 1.63(3) you cannot say anything about the "claimed invention" if there are no claims.

And, even if you finesse those two requirements, 1.63(c) will get you.  The inventor cannot sign a declaration until the application exists, otherwise how can they swear that they have "reviewed and understands the contents of the application, including the claims,” as required by 1.63(c).

I often wonder how anyone can pre-assign non-existing inventions (“I agree to assign and do hereby assign …. [a not yet existing invention].”  But you can’t do the same for declarations (you can’t have the “do hereby swear …” for a declaration for something that does not yet exist).   Others will chime in here, I’m sure.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Date: Tuesday, December 3, 2024 at 11:18 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: "Allen Richter (allenr at richterpatent.com)" <allenr at richterpatent.com>
Subject: [Patentpractice] "advance" Inventor Declaration in Employment Contracts

Dear all,

Employees sometimes refuse to sign assignments, in which case an employment contract stating that all future inventions are hereby assigned to the employer, may be of help.

In rare cases inventors refuse to sign inventor declarations. Would it make sense/ eventually be helpful to have “advance Inventor Declaration” clause in an employment contract?

Allen

European, Swiss & Israeli Patent Attorney
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