[Patentpractice] "advance" Inventor Declaration in Employment Contracts

[Richard Straussman]

I agree that one cannot assign that which does not yet exist, so I have 
used "I agree to assign and hereby automatically assign immediately upon 
creation and without the need for any further action by me and warrant 
that I will reasonably cooperate with Employer and execute any and all 
documents (at no cost to me) necessary to evidence or memorialize same" 
to cover the possibility that the person may later refuse to sign an 
assignment for a patent application.

*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
*direct line* 973.403.9943
*main* 973.403.9940
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com

*http://www.weitzmanip.com
*



On 12/3/2024 11:42 AM, Patent Lawyer via Patentpractice wrote:
>
> 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
>
> RICHTER SHIMONI PATENT ATTORNEYS
>
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