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hi everyone doug portnow from schwegman here and welcome to our webinar today on inventorship and assignment and before we get started ryan if you could just flip to slide two a couple of housekeeping and admin details uh we will be recording today's webinar and at the end of the session we'll be happy to email links to all the registrants if you have any questions today please type them in the q a box and we'll try to address them real time or at the end of the presentation and don't forget to follow us on either linkedin or on our website to check out and see what other interesting webinars and information and educational things we have ryan if you could go to the next slide a little bit about myself i'm doug fortnow and i'm a registered patent attorney at schwegman my practice focuses primarily on medical and mechanical devices and before entering the practice of law i was a medical device engineer in the device industry for about 10 plus years my background's in mechanical engineering ryan would you like to just introduce yourself quickly yeah i'm ryan connell i'm an associate here at schweigman my practice focuses on chemical arts as well as mechanical within the chemical arts i do industrial based applications chemical engineering materials pharmaceuticals in the mechanical i've done anything from gas turbine engines to medical device before going to law school i earned a bachelor's in biochemistry molecular biology as well as chemistry and then took up a master's in organic synthesis so today's talk is going to focus on two aspects of patent law inventorship and assignment and i guess to kick it off uh doug would you mind uh talking about the difference between inventorship and assignment and uh the relevance beach to patent law please yeah definitely so if you could just go over to the next slide thanks um so i think just to get started we should talk about you know why is inventorship relevant and to understand that we have to go all the way back to 1789 in the u.s constitution and the constitution in article 1 section 8 clause 8 actually reads to promote the progress of science and useful arts by securing for limited times to authors and inventors exclusive right to their respective writings and discovery so what does that mean what does that translate into so the courts have interpreted that as the constitution giving the u.s government the rights the power to grant patents to patents and copyrights to authors and inventors so writings when at the last portion of that writings would be referring to copyrights and discoveries is referring to patentable inventions so it's interesting that it talks about discoveries and not inventions but that's a whole other discussion anyways if you could go to the next slide so why is this all relevant okay so the constitution gives the us government the right to grant patents to inventors right so that's what article one section article one uh sorry article one section a clause eight states um and then invent so then inventors have they own something they own the rights to their invention they can then assign those rights to another person another company another entity so you know they can get some compensation for that so what does that mean that means patents are property they can be owned they can be exploited they can be sold they can be licensed just like any other property so the mechanism for transferring ownership is the assignment process and that's why that is so relevant today's to today's discussion if we could just go over to slide number eight next thank you so we want to also just clarify that inventorship and assignment are really two different concepts so assignment is the process of transferring ownership and whoever the owner is of that patent or that intellectual property the owner enjoys all the rights and benefits that are provided by that patent the and in this in patents the inventor is usually the initial owner of the patent because he or she is the inventor but then in under modern times modern conditions we're probably all employees of companies or faculty staff at universities so we're usually at least in the us typically obligated to assign your rights to your employer so again you know the mechanism for doing that is by assignment so the inventor assigns his or her rights to the patent to the to the employer and therefore the original inventor the original owner no longer enjoys the rights of those patents um okay if we could just flip over to the next slide and and we'll talk about inventorship uh later in the presentation about you know what that means and what the standard for determining inventorship is but a couple of relevant topics that we're not going to get too too much into today are assigner stopple so again that concept broadly is that the assigner of a patent is a stopped or prevented from challenging the patent uh in chat the patent validity during litigation um and before uh this summer that concept or legal theory was very very broadly interpreted meaning the assigner basically could not challenge the validity of patent but recently in the minerva case which came down from the supreme court this summer the supreme court limited that doctrine to just any express or implied representations that were made about validity at the time of the assignment so so the scope of the signer stoppel has been limited there's another concept on the next slide that is called this licensee estoppel and in some jurisdictions a patent licensee so again we're talking about a license not an assignment the licensee meaning the person who is paying money to obtain rights or to use the patent is a stop from challenging the validity of a licensed patent and that was the case in the united states until 1969 when the supreme court um overturned uh overturned this doctrine and that was in the lear v atkins case so a licensee now is capable of challenging the validity of a patent so with that i'm going to let ryan talk a little bit about what what or who is an inventor but before we do that is just see a couple of questions and comments in the chat so maybe we could address those uh can we download the slides uh we'll send the link to the um to the recording that you can see um if you want a copy of the slides uh if you could email us we would be able to provide that for you oh i see that some michelle already answered that question i should pay more attention sorry ryan back to you no worries so yeah so let's dig into inventorship in a little bit of detail and perhaps the most pertinent question at least for the purposes of patent law is who is an inventor because determining who an inventor is has some pretty significant consequences in terms of what can be done with the patent so there's when we think about an inventor you know there's a whole bunch of you know concepts that might come to mind but at least for the purposes of u.s patent law of inventor uh is a very defined legal standard and in the u.s it comes down to being a person who contributed to the conception of the claimed invention within that definition conception is a loaded legal word uh and it's a little bit wordy i'll just quote it from the mpep then we'll talk about it a little bit more but conception is defined as the formation in the mind of the inventor of a definite and permanent idea of the complete operative invention it is thereafter to be applied in practice in other words it simply means that an event to actually conceived of something the person must have their idea in in their head in such a manner that's clear enough that they could articulate it to somebody not only what it is how it works and ideally be able to articulate it to such a degree that somebody of reasonable skill could take what they say and make use or practice the invention essentially it what it means is that you've come up with the idea in such a manner that you have control over it that you can articulate it well it's kind of the difference between you know somebody you know say when covid uh broke out way back when saying oy you know kovit's a problem there should be a vaccine i've invented it versus covid's a problem there should be a vaccine here's how it could work here's how you make it here's how you use it that's an overly simplistic example but it shows the difference between just having some wishy-washy not well thought out idea versus actually conceiving of something solid uh that that that is useful and and justifies your your designation as being an inventor one kind of interesting quark if you're not used to dealing with this is there's a misconception about some folks who aren't as familiar with patent law that to be an inventor you actually have to make your invention or reduce the practice to use the legal terminology there is no such requirement conception really only requires you to be able to articulate it uh in words in writing whatever you don't have to actually reduce it to practice or make it to be considered to be an inventor one thing to keep in mind and this this is an interesting quirk too if you're not familiar with this that an inventor is determined by looking at the claims of your patent application or issued patent that is the inventor somebody who's contributed to the conception of a claim whatever else is in the patent application detailed description drawings abstract doesn't matter it's really just the claims that you're looking at to make the determination of who is actually an inventor or not do note that in some countries you actually do look at the balance of the application but for the purposes of u.s law it's claims only oftentimes when you're you know coming up with an invention or you know building a new device application whatever there's more people to it than just the folks who conceived of the idea you might have technicians machinists graduate students postdocs who actually help to execute your invention and that they reduce it to practice but it's important to remember that just because they had a hand in actually building your device or executing a method that doesn't make them an inventor for purposes of us patent law it goes back to simply being the person who conceived of the idea not who builds it this can be illustrated in an example we have here where say you come up with a new part design you draw out the plants draw out the schematics describe the protocol for making it and then give it to a machinist who builds it just as you told them to that machine is well incredibly important in reducing your your idea to practice isn't an inventor for purposes of patent law a twist on that might be though if the machinist actually modifies the part during during the reduction of practice say he or she figures out a tweak to make it more efficient make it better anything and they conceived of it and then that can and then their tweak or modification makes its way into a claim that's when that person could go from not being inventor to being an inventor so that's something to keep track of as you're actually reducing something to practice and that's where you know good lab notebooks or documentation can be very important should inventorship ever be the subject of a dispute um keep in mind that an inventor uh that there can be multiple inventors for any set of claims and it doesn't require equal contribution one inventor could be responsible for 90 of the subject matter of the claims whereas another inventor is only responsible for 10. they're both an inventor and they both have the same interests in the in the ultimate patent application you only need to be an inventor for one claim that makes its way into the patent one kind of trip up i've noticed sometimes is folks conflate the rules for authorship of a journal article uh with with inventorship again journal articles tend to be inclusive right you include in the academic sense right you might have your primary investigator graduate student postdoc undergrad researchers lab techs and everyone rightfully so is named an author on the paper if they had a hand in the research but you have to if you're doing if you turn that the subject matter of that paper into patent application then you have to go through that list with careful eye to make sure you you understand who actually conceived of the idea versus who reduced who was just acting that direction so keep that in mind that you don't just port over the list that you would for an academic paper into inventorship do keep in mind at least for the united states purposes a uh company is not an inventor and mentorship fest and individual inventors um doug's gonna talk about artificial intelligence there's some case law on that um if you ever do have a dispute about inventorship or need to look for guidance inventorship is a federal law issue you don't look to your individual states law on inventorship um so yeah with with that in mind doug do you want to talk about ai and some more kind of exotic cases of who can or can't be an inventor oh sure yeah definitely uh just a couple of things that are in the q a or chat someone asked if inventorship definition varies by jurisdiction how do you take one patent application from one country to another that's a really good question and in some cases there can be you know differences in inventorship from jurisdiction to jurisdiction i had one patent where in the u.s there was a certain inventorship and then in europe there was a different inventorship some jurisdictions the definition is broader in which case you're you know certainly able to to accommodate that where you know in the the narrower jurisdiction you can list the you can list the limited number of inventors and then the broader jurisdiction you can have a broader list but but yeah that's basically a question the the point is that you may have to have a different inventorship based on on the jurisdiction which you are operating there was another question or comment about is it why is the documented who invented what claims or might that be a problem um i think some people do that i generally do not i typically before we file a patent and before a patent is issued you know we review the claims with the client to make sure the inventorship is correct and if there are you know any names that need to be adjusted at the time we make changes but we typically do not memorialize that i don't know ryan do you memorialize inventorship in in any of your cases the only not not not as automatic the one time i did it was there was a company who uh had two of their subsidiaries working on on an invention through a joint agreement and there were quite a number of inventors so uh just to kind of keep things clean during the lifetime of the patent we did document who from what company uh dealt with what claims so that as the application evolved uh through the course of prosecution we could uh update inventorship ingly and then the idea being that if if that would impact ownership between the two subsidiaries down the line we just wanted to have a record uh to deal with that at the time um so that that's really the only time or if there's just simply a massive list of inventors too it's good to keep track of that but if it's just a kind of run-of-the-mill case typically not okay yeah and the only other time that i've really kept very careful track of inventorship is when there's been litigation involved i want to try to identify you know which which inventor actually invented which claim um because obviously that has important implications for depositions and things like that so but anyways let's move on to some ai questions so i guess i'm i'm i'm the perfect guy to talk about ai because a i some people have accused me of being artificial and not having any intelligence so um but don't don't right there's the drums anyways um so a couple people have asked in the chat window that you know whether how you handle other other inventors can ai or machine learning be a named inventor on a patent well um i guess the answer is it depends typical lawyer answer and it depends um you know what jurisdiction you are operating in and the case law has been inconsistent so this summer in south africa uh an ai entity named davis davis device for autonomous bootstrapping of unified sentience was listed as a named inventor on a south african patent that was directed to a food container that was designed based on fractal geometry so if you've ever seen you know like soap film patterns that's that's kind of how that works um south africa is a registration jurisdiction so there's no actual patent examination you just simply register the patent there the patent is considered valid unless a third party challenges the validity so stay tuned we'll see what happens in south africa with that um also that same patton family was also filed in australia in an australian federal court also held that that ai the same davis entity could be a named inventor um for a food container as well as a signal beacon and then on page seven uh slide 17 we move over into europe and in the european patent office during jurisdiction the epo has said ai cannot be an inventor and there were two denials of that in 2020 and very recently we had the thaler case in the u.s where a u.s district court in virginia held that the inventor must be human cannot be an ai so again someone commented on this in the chat boxes you know how can you have the same same patent in different jurisdictions with different inventorship well again you know it depends on the the rules for inventorship in the us as ryan pointed out inventorship is determined by the claims and some other jurisdictions and know in the u.s if ai is an inventor but can't be listed an inventor and we know that you have to list the correct inventorship for us patent to be valid then how can that u.s patent be valid well i'm not going to answer that i think our audience can think about that and figure that one out for themselves and then how are the rights to the invention handled if ai is an inventor right can the ai assign the invention to the company or to to someone else and how is that actually handled um so you've got to look at the law in each jurisdiction [Music] you know some laws actually specifically refer to human inventors or some typically refer to you know uh use pronouns like he or she as the inventor so presumably that means that the inventor is a human and not an ai entity some laws require mental conception such as again the u.s so you know that would seem to be seem to imply that inventorship is based on a human okay um next slide ryan please uh you know one thing that we are often asked about is well you patent attorneys you work on these patents and um you know shouldn't you be an inventor well the answer again it depends on what you do if you're just simply a pipeline or a conduit to the inventors and taking their technical information and drafting a patent application and translating all of that technical information into we'll call it patentees and drafting claims then no you're not but if the patent attorney starts you know contributing his or her own ideas that and end up being in the claims and it is possible that patent attorney could be an inventor and so patent attorneys sort of rather than being inventors on their clients patents they may ask you know does your invention perform x or does it do y or does it include z and then the inventors can answer those questions and that way it's sort of it's a little bit prompting but i think that that address is that way the the idea is really coming from the inventors um and then there was a case of the solomon versus kimberly clark corporation case where the federal circuit held that the patent attorney is not an inventor if you're just prosecuting the patent application okay um on slide 19 we do talk about how patent inventorship can definitely change during prosecution so very simple example here you file your patent application with claims 1 through 20 and 3 inventors a b and c during patent prosecution maybe there's a rejection maybe there's there's something that needs to be addressed and you have to amend your claims to distinguish the claimed invention from the prior art or you are canceling claims or adding new claims so again uh because inventorship in the the us is determined based on on the claim language um inventorship may change based on those amendments so as inventorship changes you may have to amend the inventorship on the patent application and then another issue that we talked about on slide 20 is the order inventors so does it matter well so you know everybody wants to be referred to you know on the patent as the the smith 123 patent or the jones 456 patent um you know if there's ever litigation that's typically how these things are referred to but if you have a situation where the inventorship is listed as let's say smith jones and doe and you compare that to an inventorship that's listed as jones smith though so we've switched the first and second inventors in that case is there any legal significance in that no it's the same inventorship just a different order and inventorship permutations and combinations of inventorship don't really matter as long as it's the same um but in reality yeah we all have you know our own eagle there's politics and things like that so it would be nice to be the first named inventor on a patent and you certainly can move the inventorship around the order of inventors around i can tell you once one case i had where the first inventor left the company and it was kind of like an unpleasant departure so that company decided to move that inventor down out of his number one spot down to the bottom so they weren't happy so yeah you can do that there's no legal significance in that but you know if you want to spend the time and money on filing papers you can certainly do that okay well let's see um ryan you're going to do some hypos oh i'm going to do some hypos right yeah and we've got a couple questions in the chat too if you want to yeah i want to look at those before okay um yeah with the order of inventors too i've some clients companies who they have a corporate policy if they list in alphabetical order just to sidestep uh those issues um yeah so starting up top some of these were answered in the course here there's one uh could you please give an example of a patent which lists different invention in inventors and the us and ep cases provided the claims are essentially the same um i don't have one on the off the top of my head i don't know if have you encountered that doug um so again you know my understanding so i'm a us practitioner i'm not licensed in europe but my understanding in europe is inventorship is determined based on the teachings and disclosure of the specification not the claims so it is quite possible that you know in the us if you claim um you know an invention x but the specification discloses inventions x y and z that the european application would have more inventors than the us application so hopefully that answers that question i can't give you a specific patent number off the top of my head but but we have seen that yeah there's another one asking if there are particular risks and over-inclusion of inventors provided even if they're all from the same company and have the appropriate employment agreements um i mean you wanna you know you can't uh lie about inventorship you wanna you know really keep it tailored to who actually is an inventor um the more inventors you list to the more opportunities there are um even if they have an agreement to to assign rights um you know it's not automatic they actually have to execute stuff so the more you put on the the more you increase your risk of not having an inventor just cleanly assigned then you have to go through steps to to make sure that they get it over to you it just um it just can introduce opportunities for for air um and whatnot what do you think doug yeah and again in the us which is very strict about inventorship if you have over inclusive inventors you risk the chance of patent and validity so you don't want to to just you know sprinkle inventors uh you know like salt or pepper on on the patent you know in other jurisdictions they're they're much more liberal about that and and it's more like we'll call it you know scientific journal publication where you want to just give credit to people um and there are no implications for having over inclusive inventorship yeah then there's just uh what's the rationale to give equal rights for an invention uh with non-equal contribution i think it's just a policy to just keep things efficient and clean and not have to argue about who has what share in a patent or not um and probably to encourage collaboration in the invention i think some jurisdictions actually do doled out ownership percentage-wise right doug yeah it's certainly possible to split things up and um you know we can we can talk a little bit about that later on when we get more into uh assignments but um but in general yeah it's undivided equal ownership yep and then there was one of have you ever added a patent attorney as an inventor i've i've avoided that uh throughout every patent i've i've written there's uh you know my questions are to articulate the invention and understand not to not to contribute um i as a patent attorney have never added my name um i do know at least one attorney who lists himself on a lot of applications but um i think that is justified because that that individual definitely is very active and you know the technical the r d parts of it so um i think that's that's fair uh yeah so should we do the hypos okay good so um so to our audience you know feel free to comment in the chat box uh or the q a box preferably the q a box uh as we go through these hypos but ryan since you're right there and i can see you i'm gonna i'm gonna pick on you so hypo number one uh mr or mrs smith conceives of an idea for a new tool builds the prototype so there's a physical example of that then files a patent application and claims the tool so maybe kind of walk us through your thought process on who the inventor would be in that would it be smith or somebody else oh it would absolutely be smith he uh conceived of the idea even went through the step of building it which again you don't have to do necessarily and then his patent application uh claimed it so uh iron chuck case he's an inventor yeah i agree uh what about the you know any of the techs technicians or machinists why wouldn't they you know be involved in that uh from gosh i feel like i'm going back to writing a law school exam answer based on these facts uh they uh the there's there's nothing uh saying that any machinist or technician uh actually did anything uh at all and if they did they certainly didn't conceive of anything so they don't meet the standard of being an inventor okay good i agree and i see a few comments in the chat and q a that seemed to align with that as well um so hypo number two our same inventor same individual smith now conceives of an idea for a new tool and instructs technician jones to build the tool and then they file a patent application that claims the tool so again who would the inventor be kind of walk us through your thought process yeah so here again you have the conception has been done by smith and the tool uh the patent claims the tool that he conceived of so he's certainly an inventor uh jones uh was instructed uh to build the tool so it seems as though he only acted at smith's directions and didn't contribute anything that made its way into a claim above what smith conceived so smith is an inventor uh jones is not okay i would agree with that as well and our third hypo again are our favorite smith conceives of an idea for a tool a new tool instructs technician jones to build the tool technician joan makes improvements on the tool they then file a patent application not only claiming the tool but also the improvement so who would be the inventor in that situation all right so here jones has uh is now an inventor uh smith conceived of one idea that made its way into the claim uh jones followed those instructions but also made an improvement or modification and importantly that modification or improvement made its way into a claim had that not been in a claim he wouldn't be an inventor but since his improvement isn't a claim he's now an inventor on this application so smith and jones okay good i think i agree with that as well so we've talked a little bit about you know who is an inventor and what are the requirements and let's say you fill out some forms and you identify inventors but sometimes we make mistakes what can we do to fix those well there's two main mechanisms one is you can go through the patent office with the code of federal federal regulations you can also go the federal court route and file a lawsuit under usc excuse me 35 usc 256 to correct inventorship in an issued patent and keep in mind that when we say correction of vendorship that can be to add or remove an inventor from the list just by way of an example this is what the output that you get from the patent office if you correct mentorship through the cfr uh what it is is it's a supplemental application data sheet and here you can see we've added inventor three and inventor four on the underlined language that you need that uh you know it's pretty typical and standard and uh that's that's the output that you would get after you correct mentorship through the patent office and just out of curiosity ryan um you know how is it that you can show these documents and some people may have concern about you know confidentiality yeah of course uh these are all publicly available um if you uh aren't experienced in uh looking up these types of documents you can get them through a system abbreviated as pair p-a-r-i-r and it essentially gives you the the every you know piece of paperwork uh that's publicly available that's associated with a patent and uh this is one of them that you can pull from the patent office's website good thanks if you do go the federal court route this is just an example again of something we pulled uh from the public records of uh the judgment that that uh names the inventors you know between the two options the patent office route is the fastest if it's something that's kind of clean uh not contentious uh the the court route uh is uh helpful it can be kind of ancillary to patent litigation uh it can be good for if there's a contentious uh dispute about inventorship or if there's facts that need to be developed just uh you know two options to use for whichever suits your needs best so that closes out inventorship for now so we'll move on to the other half of our presentation of assignment assignments relevant to the owner ultimate ownership of a patent as we mentioned before in the united states ownership of a patent best immediately in the inventors absent anything to the contrary they're going to be the owners in reality though if you've looked around at other pens you'll see most of them are owned by companies universities some entities other than individuals that's done through mechanism of assigning the inventors assigning their rights to that entity in most scenarios if you're an inventor and you work for a company or if you're a faculty member at a university graduate student at a university somewhere in your employment agreement there's a note that you're obligated to assign rights in any of your patents to the company so that they automatically well not on there they're they're entitled to become the owner of of the patent they're entitled to have you execute an assignment to them uh note that assignments it's contract law essentially so unlike some other areas of patent law ownership is is for these purposes can be controlled or have an aspect of state law in them yeah and i think that's really important to emphasize just you know some aspects of inventorship ownership assignment all that maybe federal and other aspects are state controlled under state law so you gotta really watch out for you know pay attention to that yep and so on the ownership you know like we just mentioned that if you're hired as an inventor oftentimes you're obligated to assign your work to your employer there are some kind of other iterations or things to be aware of um in some cases if you don't have an obligation to assign in your employment agreement yet you used your employer's resources to help you with your invention and and especially if the work was within the scope of your employment your employer might not ultimately force you to assign but they might have what are called shop rights which is a implied license uh to make use and sell your invention without fear of an infringement suit kind of a sticky issue but something to be aware of so just because you don't have an obligation to assign don't think that you're necessarily out of the woods there might be more facts to to be aware of if you're a corporate officer so you know you're not hired necessarily to be an inventor but say that you uh do some inventive activity and figure something out you might actually this gets deep into corporate law but you might have a fiduciary duty uh to assign your invention to your company at the end of the day though if you're if you are an officer of a company and you want to make sure that your ip that's developed with your company is protected or you're an employee just make sure to check your employment agreements or or make sure when you're drafting these up that you account for your ip because this can have some major consequences for how your ip assets are ultimately owned also if you're a contractor or a consultor just because you don't work for a company per se as a permanent employee do watch your consulting agreements to see how any ip that might be generated during the course of your consultancy is divvied up so ownership i mean you know it's a fair question you know why do we care so much well joint owners of pat are joint owners of a patent have equal and undivided rights to make use offer to sell the patent importantly they can do whatever they want with it without consent from the other joint owners so imagine a scenario where you have foreign vendors on a patent and you want and you've got three out of the four assigning to company a but the fourth one doesn't want to assign or forgets to or just hasn't assigned for any reason that could really screw up your business plans later say that company a was planning to do an exclusive license with company b but then that rogue fourth inventor decides to sell his rights or assign his rights his or her rights in the patent to company c well that undercuts the value of that exclusive license to company b so you really have to make sure that your assignments are buttoned up and that anyone who is an inventor has assigned fully to that company and it's it's also something that if you're acquiring a patent or portfolio that you want to make sure that all that everything's tied up and that every inventor has assigned their rights in the patent to that company and that there isn't that possibility for someone to go rogue if you will i think uh and doug with that can you uh i think this case talks about some of the consequences of not having assignment buttoned up yeah definitely uh so you just use the word going rogue i think this is a good example of going rogue uh so this is kind of the classic case where you have this um you know missing inventor that pops up out of the woodwork etherconv u.s surgical so for those of you who aren't familiar with those companies ethicon is the division of johnson the johnson that i believe is primarily responsible for sutures and some of their endoscopic products and u.s surgical was a big also surgical company mainly involved in endoscopic products if i recall i think u.s surgical has now been absorbed into covidien if i recall anyway so there was a patent infringement suit ethicon sued u.s surgical for patent infringement and it turns out there was an omitted inventor on that patent that omitted inventor somehow got got wind of this patent infringement suit contacted the defendant u.s surgical and ended up licensing uh his or her rights to that patent uh to u.s surgical so of course there was litigation to determine all of that and the court did find that there was an omitted inventor um for sure and because the omitted inventor did license his rights to u.s surgical u.s surgical now had rights to that invention and so u.s surgical is not infringing the patent and therefore the case was dismissed so ethicon was unable to sue their their competitor us surgical because this omitted inventor popped up out of the woodworks assigned his rights to the defendant and then the defendant now was able to practice the invention without fear of patent infringement so again it's really important to you know identify the correct inventorship it's really important to make sure all the inventors have assigned their invention to the right entities otherwise you can get it in a situation like this then on slide 30 we go into another a very interesting issue and i can't even claim to know the answer to this but i just want to mention it because i think it is very intriguing and that's community property and how that affects intellectual property ownership so as as our audience knows some um states like california are community property states so any property acquired before marriage is separate property any property acquired during the marriage is considered community property and community property is evenly divided between the parties upon dissolution of the marriage so um how does that apply to patents if we go to the next slide uh there was a case um the anovus nextel case um so the plaintiff and all this sued nextel for patent infringement over some gps technology um the defendant extel then argued hey you know you can't sue us you don't have standing because you didn't get um consent from all the patent owners they weren't all joined in the lawsuit um so and then nextel also argued that the reason that not all the owners were joined in the lawsuit was that the inventor his ex-wife should have been a co-owner on that patent based on california community property laws fortunately this one was i guess pretty straightforward so the court held that during the dissolution of the marriage the california state court issued a divorce decree and that resolved ownership of all the property and both parties signed it and therefore there was no no issue about ownership of the patents even though the patents were not i don't believe the patents were specifically enumerated in that divorce decree the court said well you know you guys settled all the property issues so there's no issue about you know who owns the past so you know in this case things were relatively cleanly resolved i guess but it still does you know leave the issue about what if there was no divorce decree uh you know what if we're talking about a couple that's still married you know if if one of the spouses invents something does the other spouse still have some ownership in that um so that's a very intriguing issue now this you know i think we'll just have to kind of watch and see how the courts uh handle this if if these issues are raised in the future but it's certainly one of the privileges of living in california let's we'll leave it at that okay um so let's talk a little bit about you know assignments so again you know we've talked about some aspects of inventorship and assignment being controlled by federal law some aspects are controlled by state law at its core assignment is contract law contract law is state law right so contract law for our attorneys out there you'll remember from your your lovely contracts 101 class that an off contract consists of an offer acceptance and consideration so these are typically bundled in the employees employment offer so there's typically not a separate contract so your consideration is typically you know your salary sometimes uh inventors will get the nominal peppercorn or one dollar uh for assigning the patent to the company i am a named inventor on a few pens i never got my one dollar i'm still waiting for it but so i assumed that my salary was considered the consideration in that transaction but let's look at some of the mechanics of assignment so if we scroll over to the next slide please thank you so this is a typical assignment form that um a lot of law firms will use and i'm sure a lot of people in our audience will recognize this so a couple things that we want to identify so in the first paragraph you'll see this right the right the arrow on the top right hand side it identifies the property which has the serial number the patent application and the title so obviously you want to identify what property you're assigning or transferring ownership to and then this first arrow on the left we talk about for good and valuable consideration so remember contract law requires consideration meaning compensation and then the next arrow on the left kind of highlights the fact that we are conveying assigning and transferring to to this company the the patent that's listed above so what we look for in that situation is what's called a present assignment clause not a future so in other words the assign or the person who's giving the proper way or selling it or transferring it does transfer it in the present time not in the future because if you say i will transfer it that could be any time in the future so that's not really going to help you you want the transfer to be in the present time so present transfer clause is required and then in this next paragraph below where we see the the red arrow oh sorry go back thank you um the second red arrow on the right hand side that's talking about other patent family members including divisionals continuation applications continuation parts foreign counterparts etcetera etcetera so again you know you don't want typically you could if you want you could just transfer one patent but typically we assign patent family so that means that the one patent of interest and then any foreign counterparts any continuations divisional so that's the point of that paragraph and then the last red arrow on the left is also important for for countries such as their jurisdictions such as epo the european patent office where you want to specifically enumerate that you are transferring the right to claim priority to the pres from of the present application back to any earlier patent application so if you don't transfer the right to claim priority then you would lose that priority in some foreign jurisdictions such as europe then the next slide is just some more language boilerplate language that we'll just kind of skip through and then if we go over to slide 36 you'll kind of see in the u.s typically we only get the assignor signature who's assigning meaning the owner assigns it to the company in this case there is no acknowledgement or execution by the assignee the company because it's not required there's no notary notarization there's no witnessing because those things are not typically required in the us but you should be aware that in different jurisdictions they may require no notarization a witness signature or acknowledgement by the assignee so like for example in in europe typically you need the assignee signatures so be aware that you know one assignment form may not work for all jurisdictions and you may have to modify the form so it's best to talk to your you know foreign foreign counsel to make sure that these forms are correct um so ryan we've got a invention we've got an assignment form signed and are executed how do we actually what do we do next how do we perfect assignment and what is perfection well yeah i'll go through that looks like i've got about 10 minutes or so left so i'll kind of try to speed through it a bit but perfection perfecting assignment essentially means recording it if the assignment's executed and sitting on your desk or in a file alone it's not going to do too much for you what you really have to do once it's executed is record it with the patent office it's analogous to if you buy any property house piece of land what not you're recording it with the county registrar uh the reason being that you that the paul patent policy wants you to provide notice to the public of who actually owns uh the patent and we should just uh just talk very briefly that you know in some jurisdictions like the u.s electronic signatures are acceptable you can use or adobe sign um most your most jurisdictions that you know i deal with except electronic signatures um but some jurisdictions do not so again you have to be aware of you know where you're working right that's a good point um this is the output from the patent office if you do uh once you do record your assignment with them uh this is publicly available for anyone to search and you can track uh the the transfer of the patent between prop between uh inventors to entities and between entities as well perfecting the assignment again it's pretty pretty important and it's even more important to do it timely i mean i try to get these things recorded same days they're executed and at a maximum like the day after the reason being that if you don't record it soon enough if somebody else records an interest against that before you your claim uh to to ownership can be impacted uh quite negatively so the the take-home about assignments is don't just execute them make sure you get those things recorded as soon as possible um stepping back to getting the assignments executed that's also something that you want to do as soon as possible inventors can change jobs and be difficult to track down to get their their assignment even if they're to get their signature even if they're obligated to assign to the company they might be disgruntled and not want to cooperate again even if they're obligated to assign it gets cumbersome to to make them do it there are some mechanisms to sidestep that if you absolutely can't get a signature but it's just best to avoid it completely in some cases i've had where an inventor has you know died before having the chance to execute it's just stuff that you want to do as promptly as possible make sure that you're overly inclusive of assigning patents in a chain so going all the way from a provisional to pct to a national stage entry it's good to have assignments at every step it keeps the the chain of title clear and it help also in some cases particularly in europe can help you to establish your priority claim all the way back to its earliest so it's something that you really want to make sure that you do anytime you get a patent on files make sure the assignments are buttoned up and ready to go correction of assignments you know errors happen and there are plenty of mechanisms to get it fixed the most common are simply misspelling of an assigner or an assignee's name wrong company name is a big one make sure you know exactly what the entity of the company is um you know the comma between a company's name and inc is a big one that you'll see uh inc versus llc versus pa versus whatever just make sure that that you have that matched up sometimes i've asked you know see to the extent they can show me articles of incorporation just to make sure uh that i get that ship shape um you can get uh the raw and patent number you might as a typo list you know application other than the one you intend to assign this can happen on your end uh sometimes it can happen that a third party might accidentally list your company's name on the assignment and it can all be fixed but it's just stuff to to be to be cognizant of and make sure that your portfolio is uh is in good shape if you ever go to try to monetize your patent by by selling it selling a portfolio this stuff will come up in a due diligence it most certainly will be found and it's something that could delay a deal or in a worst case kill a deal so you really want to make sure that your your chain of title is clean and free of any questions so here's some hypos about some some common errors in assignment and uh i'll ask doug if uh if it makes sense to let it uh let it ride or get it fixed and if so how so doug uh inventor uh jonathan a jones say that's how he's listed in the application data sheet executes an assignment but in the assignment his name is john a jones what do you think um well it could be okay um but i'm you know i like to cross the t's and dot the eyes so to me i always try to go with the full legal name so that there is absolutely no doubt that jonathan a jones is john a jones um so we would if if the assignment was executed with john h the abbreviated uh name i would um either file a corrective assignment or i would just have him initial and date and put his you know full name on the assignment form okay how about inventors execute an assignment to abc inc but the company is actually abc llc uh so they're two technically they are two different legal entities so assignment has the way i interpret this as assignment was to the wrong entity and therefore it should be corrected okay inventors assign patent application to abc inc and then abc inc is acquired by xyz inc but there's no assignment between abc inc and xyz inc um so probably there is you know some kind of merger document or acquisition document between the companies so that's probably good enough but again um you know it's just good to record these things on the pto website so everyone can see them and they're public so um i would definitely make sure that there's an inter-company assignment that's recorded on the pto website all right and then oops the other one was two of three inventors assigned to abc but the third never executed an assignment uh big problem so again you have that uh you know that potentially rogue inventor so you better get inventor number three to to assign all right so i'll turn it to doug to show how to actually correct an assignment should that be necessary okay so fairly straightforward again we're just showing you some public documents here so it looks like in this particular example there was a typo in the company's name uh so we just um we added the correct company name correct spelling of the company name and had all the inventors um initial and date the change and then we refiled we re-recorded this as a what's called a corrective assignment um and then problem solved let's see so next slide so as ryan mentioned sometimes you can't get inventors to execute the assignment sometimes they quit they may be disgruntled sometimes they pass away on you know untimely so you kind of need plan b so a good idea for companies always to again have these employment agreements or consulting agreements that have an invention assignment clause um basically you know says that you've been hired to invent and the company owns any inventions that are related to you know your job function here so if you um can't get the actual inventor to execute the assignment form you can also often record these um employment or consulting agreements as and demonstrate that there is assignment so that's a kind of a backup plan and then um let's talk just very briefly about assignment and licensing so you know again assignment relates to ownership and licensing relates to not owning it but having the rights to use uh use the technology or the patent the invention so the analogy that i like to use for this concept is you know assignment is when you buy the car you buy the shiny red car and you own it um versus you either rent it from you know hertz or you rent it you lease it from the dealership that would be equivalent to licensing it and then if we just go to the next slide uh some more comments about assignment versus licensing so you know in both assignments and licensing you can kind of define what aspects of the invention you want to assign your license so the analogy i like to use is a pie i'm not sure i would actually eat this pie because it's kind of a very unappetizing green color unless it's a key lime pie then of course we will eat that because everybody likes key lime pie but um you can slice up you know the pie any way you want into big slices little slices they don't have to be triangular slices they could be you know squares or or circles or you know any geometric shape so the point being that you can divide up the the property any way you want so you know in a license you can you can you can license based on a field of use you can base your license based on geographical territory time limits etc etc um you know another analogy is is a house right so you could sell the house you could sell you know part of a house you could rent a house you could rent a part of a house um you know you could rent the house for just a portion of the year so same thing with assignments and licensing is you have to set up the terms of those things um and then just the last slide that i was going to put up here you know we were planning on doing a demo of some of the stuff on pair obviously we're out of time now so we won't be able to do that but a lot of these things you can see on the pto's website pair which is patent application information retrieval so anything that's publicly available you would be able to see it there there's also their database aotw assignments on the web so you can you know pull up and look at that stuff um so we're actually out of time uh so i do want to thank all of our attendees we had a fantastically large crowd several hundred people on today's web webinar so thanks for taking the time i know we didn't get to all the questions we will try to address some of those offline but thanks ryan michelle and brianna for helping us put together this webinar and hopefully you've found it useful and informative so have a good day everyone bye