The ability to rely on ownership of an invention is critical to
a business seeking full enjoyment of the rights available to it in
the invention. While assignment agreements drew little attention in
the past, recent decisions in multiple jurisdictions confirm the
importance of considering assignment agreements early in the patent
process and throughout the life cycle of a business' global
patent strategy. These decisions raise key considerations for
securing ownership and avoiding surprises.
Review and Confirm Assignments
The realities of business make it prudent practice to acquire
assignments of inventions before the invention even exists. For
example, businesses commonly require their employees and
contractors to execute employment agreements including assignment
provisions that purport to assign ownership of all future
inventions and related rights to the business.
In Canada, two recent decisions considered this issue:
Verdellen v. Monaghan Mushrooms Ltd., 2011 ONSC 5820; and
Century 21 Canada Ltd. Partnership v. Rogers Communications
Inc.  B.C.J. No. 1679. These cases applied basic
property law principles in restating that assignment agreements
cannot effectively assign legal ownership to intellectual property,
such as an invention, if the invention does not yet exist. Rather,
an assignment to a future invention is merely a promise to assign,
requiring additional acts to complete the assignment once the
invention is created.
It then becomes critical to ensure that inventor-employees are
obligated to, and do in fact, execute further agreements to confirm
the business' ownership to a future invention once it is
Regularly revisiting ownership status of an invention is also
good practice. An opportune time for reviewing ownership status and
confirming assignments is early in the patent process, such as at
the time of filing.
Have Rights Actually Been Assigned?
In contrast to Canadian practice, U.S. law establishes that no
further action is necessarily required to convert legal title to a
future invention once the invention comes into being (Filmtec
Corp. v. Allied-Signal, Inc., 939 F. 2d. 1568 (Fed. Cir.
1911)). In this context, recent U.S. decisions distinguish a
present assignment of a future interest from a mere promise to
assign (C. R. Daniels, Inc. v. Naztec Int'l Group,
LLC, 1:11-cv-01624 (D. Md. Apr. 13, 2012); Board of
Trustees of Leland Stanford Junior University v. Roche Molecular
Systems, Inc., 131 S. Ct. 2188 (2011)). In these decisions,
the use of language such as "does hereby assign" or
"does assign" was considered to effect a present
assignment of a future interest, whereas language such as
"agree to assign" was considered to transfer a mere
promise to assign rights in the future. The impact of this
distinction can be severe since, unlike a present assignment of a
future interest, a promise to assign results in no transfer of
title until the assignment is confirmed.
It is, therefore, important to consider the language of the
assignment to confirm that interest has actually been assigned and
not just promised.
Assign Priority Rights Before Filing
A valid priority date can be critical to patentability in that
it limits the state of the art that is considered when assessing
novelty and inventive step requirements. Assignment of the right to
claim priority can, therefore, have a crucial affect on
patentability, as recently demonstrated in decisions by the
European Patent Offi ce (EPO) Boards of Appeal (T0062/05) and
national courts of the contracting states to the European Patent
Convention (Edwards Lifesciences AG v. Cook Biotech
Incorporated  ENHC 1304 (Pat)). These decisions
emphasize stringent requirements for transferring priority rights.
Specifically, the decisions confirm that priority can be claimed
only by the identical applicant of the earlier application, and
that the right to claim priority is only transferable so long as it
is transferred by way of assignment or the operation of law, before
the filing of the later application.
The potentially serious consequences of an invalid transfer of a
priority claim highlight the importance of considering assignments
early in the patent process, and preferably before relying on a
Recent developments in assignment practice worldwide confirm the
increasing importance of considering assignment issues early in the
life cycle of a business' global patent strategy to ensure that
ownership of the invention and its related rights is secured.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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