[Patentpractice] "advance" Inventor Declaration in Employment Contracts

Tue Dec 3 18:00:11 UTC 2024

I agree emphatically with Patent Lawyer.

I disagree on a technicality with Richard -- there are a few Federal
Circuit cases that approve advance assignments.  But I like Richard's
language a lot, because is just sidesteps a fight.  It's one of those
fights that even if your client wins, you lose.

On Tue, Dec 3, 2024 at 11:52 AM Richard Straussman via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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 <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>
> <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice
> Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Reply-To: *Patentpractice Patentpractice
> <patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com>
> *Date: *Tuesday, December 3, 2024 at 11:18 AM
> *To: *Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
> <patentpractice at oppedahl-lists.com>
> *Cc: *"Allen Richter (allenr at richterpatent.com)"
> <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
>
> *www.richterpatent.com <http://www.richterpatent.com>*
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> 7033
>
>
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