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Using the America Invents Act to Your Advantage: Addressing Inventor Issues Before They Materialize

Issues regarding both patent filing requirements and patent ownership can arise when an inventor is unavailable or uncooperative. According to the September 16, 2012 final USPTO rules, an inventor’s obligation to assign patent rights would be useful to permit assignees to sign a substitute statement in lieu of an inventor’s Declaration in order to meet patent filing requirements. A few simple efforts can be made to mitigate issues (and expense) that can arise when attempting to locate an inventor and/or to evidence either unavailability or lack of cooperation with regard to obtaining the Declaration. In connection with this, efforts can also be taken to ensure that an employer or assignee retains patent ownership rights.

The Issue:

In certain instances, patent applications are filed without having the benefit of an inventor’s assignment, Declaration and/or (full) cooperation. This can occur, for example, when trying to sort out who the inventors might be, or when time does not permit for the acquisition of properly signed forms. Rushed filings may also become a more regular occurrence under the first-inventor-to-file rules. Under the previous rules, advancing USPTO prosecution without properly-executed documentation could be difficult and expensive, particularly when an inventor is or becomes unavailable or uncooperative.

Preventive Measures:

The new USPTO rules provide some relief in addressing the above situations, by relaxing the requirements for proceeding without an inventor-executed Oath or Declaration. If a non-signing inventor is under an obligation to assign, the hope is that recent rule changes applicable to 37 CFR § 1.47 can be invoked so that the inventor’s signature is not needed to secure issuance of the ensuing patent. Further benefits may be gleaned if an employer or other rightful assignee can evidence such an obligation. This article suggests two relatively straightforward and easy-to-implement strategies to make use of the new rules, as well as more involved approaches to addressing issues that may arise with regard to assignments.

(i) Invention disclosure form: The invention disclosure form can state, before the inventor’s signature line (or as an addendum to be separately signed), that the inventor’s signature acknowledges the inventor’s assignment of and/or obligation to assign any rights, title and interest in the invention disclosure to the employer/assignee.

This part of the invention disclosure form, with appropriate redaction, may evidence an employer or assignee’s right to prosecute the patent application. Such a statement may decrease leverage that an inventor might have after the value in the IP is recognized and/or developed. An inventor’s refusal to sign at the outset may forewarn that issues may arise, and could be a factor in deciding whether or not to pursue a patent.

If an invention disclosure form is to be used to evidence assignment/obligation to assign, it may be useful to ensure that the form does not include information that may be undesirable to disclose. For instance, discussion of related art or motivation for carrying forward with the invention can be avoided, with the understanding that the invention disclosure form may need to be inspected in order to evidence assignment.

(ii) Initial documentation: In email (or other) communications with inventors concerning patent-preparation projects, the assignment and/or obligation to assign can be further supported. A twofold clarification, preferably at the outset of patent-preparation efforts, might include: - Clarifying that an employer is the assignee (as opposed to the client being the inventor). The USPTO rules now formally recognize long-standing problems by eliminating the USPTO form which combined the Inventor’s Declaration and Power of Attorney (in not owning the invention rights, an employee-inventor has no authority to sign a power of attorney). While eliminating this USPTO form helps, an express characterization regarding representation is helpful to clarify the record at the outset. - Creating clean communication for possible use in evidencing that the inventor acquiesced regarding the inventor’s obligations to assign and/or that the inventor is under an obligation to assign. This may help to resolve questions if the assignee needs to file a substitute statement in lieu of an inventor Oath or Declaration. See 35 U.S.C. 115(d) and 37 CFR 1.64. The substitute statement may be filed by an assignee, a person to whom the inventor is under an obligation to assign, or others as indicated here

(iii) Employment agreement: Employment agreements and/or an addendum thereto can include a provision that the employee is under an obligation to assign and/or assigns rights to any and all intellectual property developed under the employ of the employee. By stating both that the employee is under an obligation to assign, and that the employee actually assigns such rights, protection may be given in situations involving intellectual property that is either yet to be developed or otherwise undefined.

(iv) Separate agreement: If an employment agreement does not contain an assignment, an employer can obtain a separate agreement to assign an employee’s intellectual property to the employer. While assignments are ideally executed as part of an employment agreement upon hiring, such a separate agreement may at least facilitate the satisfaction of the Oath/Declaration requirement.

So, you’ve satisfied the USPTO. Now what?

Satisfying the Oath/Declaration requirements may only be a first step in ensuring that an employer or assignee can obtain patent rights. For example, an assignment recognized by the USPTO may be insufficient to support an assignment of rights under applicable state laws, which may vary with respect to the treatment of employment agreements and the assignment of property. The issue may depend upon whether an invention was under the scope of employment, or whether further consideration is needed. Importantly, an assignment made in an agreement executed subsequent to employment might be disregarded, absent consideration commensurate with the scope/value of the assigned rights. Ensuring that an assignment is part of an initial employment contract may serve to lessen or avoid this issue.

Accordingly, it can be important to not only satisfy USPTO requirements, but to do so while keeping potential disclosure issues in mind and ensuring that an assignment of rights will be upheld under appropriate laws. Obtaining documentation that recognizes a general obligation to assign (iii or iv above) can help meet the inventor Declaration requirement without disclosing an invention disclosure form or other communication. Including assignment/obligation to assign language in one or both of an invention disclosure and initial communications (i or ii above) may serve to identify and address patent ownership issues early in the process.

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© Crawford Maunu PLLC. All rights reserved. This material is for informational purposes only and should not be construed as legal advice. Also, as this material was prepared by individuals and not prepared by Crawford Maunu PLLC acting on behalf of any particular client/factual situation, this material should not be construed as providing a specific position applicable to any legal matter. Communication of this material is not intended to establish an attorney-client relationship. Legal advice should be sought from legal counsel.