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Patent Assignments - What Inventors Should Know
Michael J Foycik Jr
by Michael J Foycik Jr.
May 29, 2013

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

If you're an inventor who is considering signing an Assignment of a patent or patent application, there are a few things you may want to know.  Most questions concern the language of the Assignment itself, namely the promise to assign future improvements and to sign new patent applications related to the invention.

The typical Assignment includes language assigning the invention to the new owner (called the Assignee).  That new owner is usually either an employer or someone who wishes to purchase the rights to the invention.  For that new owner, some of the value of the invention may reside in the ability to file more patent applications, to make a family of products. 

For example, let's say the invention is a big success; the new owner will surely want to file more patent applications for any likely variations that a competitor might try.  And, let's say the original inventor has moved on to a new company or a new business.  How much of a burden will be on that inventor, under the terms of the typical Assignment?  And, what about new inventions the inventor later makes – will those need to be assigned to the new owner under the terms of the original Assignment? 

The key to answering the above and other questions is in understanding the legal meaning of the term “invention” in the original Assignment.  The term “invention” must necessarily refer to the invention as shown and described in the patent application, and to any “obvious” variations.  Because the courts generally define the word “invention” in this manner, it would appear that the inventor's future obligations should not be overly burdensome.  

For minor variations, the inventor will very likely have to sign future patent applications under the terms of the original Assignment.  What are minor variations?  Court decisions have enumerated those that most often occur, such as size, shape, color, obvious extra features, and the like. 

But, if the variation itself rises to the level of a new invention, then it is likely a court would consider that to be beyond the scope of the original Assignment.  There are many court decisions on this subject.  This is where inventors can make money, since presumably there is a good reason for the new patent application, probably because the new owner (the Assignee) is making money on the invention.  The Assignee of the original invention may have a lot at stake, and therefore may be willing to pay for the inventor's cooperation.  

Sometimes, the Assignee will pay the inventor something even when the new patent application relates to minor variations, to compensate for the inventor's time and trouble, and of course to avoid disputes.  Sometimes, the Assignee will offer nothing, and expect the inventor's cooperation anyway.  The Assignee can go to court when the inventor refuses to sign, and the court itself can provide the signature for the inventor. 

Nothing in the foregoing constitutes legal advice.  For that, it would be necessary to consult a patent attorney who would need to look into the specifics of the situation.  The patent attorney also can provide an Assignment, if one is needed.  Such Assignments often need to be tailored to the specific situation, and ideally a professional should attend to it. 

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.