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Present Assignment is Important for Patents, Too

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In “Copyright: Why You Need Presence of Mind about Present Assignments“, I wrote about why copyright assignments should be expressed as present assignments (e.g., “I hereby assign”) rather than obligations to assign in the future (e.g., “I hereby agree to assign”). This suggestion applies to assignment of patents, too.

A researcher at Stanford University, in collaboration with Roche predecessor Cetus, developed methods for quantifying Human Immunodeficiency Virus in human blood samples, and correlating those measurements to the therapeutic effectiveness of antiretroviral drugs.

Stanford obtained patents for the methods and sued Roche, alleging that its HIV detection kits infringed Stanford’s patents. The U.S. Court of Appeals for the Federal Circuit ruled against Stanford (Stanford v. Roche) for the following reasons:

  • The researcher’s agreement with Stanford said “I agree to assign . . . such inventions” to Stanford. This was a promise to assign rights at an undetermined time in the future.
  • The researcher subsequently entered into an agreement with Cetus that said “I will assign and do hereby assign . . . inventions” to Cetus [emphasis added]. That agreement, once signed, constituted a present assignment to Cetus – after which, the researcher no longer had any rights to assign to Stanford.

Accordingly, the court ordered that Stanford’s patent-infringement claims be dismissed.

Update: On June 6, 2011, the Supreme Court affirmed the decision of the Court of Appeals in Stanford v. Roche.

Dana H. Shultz, Attorney at Law  +1 510 547-0545  dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.

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