[Patentpractice] "advance" Inventor Declaration in Employment Contracts

Tue Dec 3 23:45:50 UTC 2024

A little recognized, but added benefit, of including the automatic
assignment language (“agrees to and does hereby grant and assign”) in an
agreement, is that it may entitle the grantee to the Right of Priority.  As
I note in section "III.B.1.f The Equitable Owner is the 'successor in
title,' Enjoying the ROP in," in "Avoiding Failed Patent Application
Filings" Rick Neifeld, November 1, 2020.

On Tue, Dec 3, 2024 at 1:02 PM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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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-- 
Best regards
Rick Neifeld, J.D., Ph.D.
Neifeld IP Law PLLC
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