01/24/2018

Express Employee Patent Assignments: Staying True to Intellectual Property's Credo of Rewarding Innovation


Express Employee Patent Assignments: Staying True to Intellectual Property's Credo of Rewarding Innovation

Paul Spiel

Employees often assign away rights without knowing they are doing so, introducing what some have called ”cube-wrap” contracts. In ProCD, the 7th Circuit concluded that shrink-wrap agreements were valid, but the reasoning the court used is not well suited for employment-related patent assignments. Express employee patent assignments impermissibly overreach into an inventor’s past and future and could be deemed unconscionable. Rewarding innovation is ingrained in the U.S. Constitution and is a major justification for patent law itself, but express assignments remove this incentive. Public policy in tandem with unconscionability justifies a reworking of the ways in which employees expressly assign patentable inventions.

99 J. Pat. & Trademark Off. Soc’y 79(2017)

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