Next, in Section B, this Part addresses the broad strokes courts use to address and resolve assignment disputes as well as how the precedent developed into the application used today. As Thomas Jefferson once observed, “[h]e who receives an idea from me, receives instruction himself without lessening mine . Renewed focus on the patent field by legislators and businessmen rises and falls with economic hardship. as a matter of federal law.” Congress never intended that the patent laws should displace the police powers of the States, meaning by that term those powers by which the health, good order, peace, and general welfare of the community are promoted.
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. Whatever rights are secured to inventors must be enjoyed in subordination to this general authority of the State over all property within its limits.
Upon agreement to employment, the employee–inventor loses “[w]hatever rights . “Agency is the fiduciary relationship that results from the manifestation of consent by one person to another that the other shall act on his behalf and subject to his control, and consent by the other so to act.” As an application of agency law, the Court held that the patent belonged to the government because the employee–inventor used the resources of the government–employer and he was hired for the purpose of making the invention.
Many courts operate with the presumption that when an employee–inventor is employed by another, the employer owns the invention and the employee–inventor must prove that he or she truly “invented” the creation in order to retain the rights to the invention.
Notwithstanding the provisions of this section, the commissioner of general services and state agencies may, with concurrence of the office of state comptroller when the original contract was subject to the office of state comptroller approval, waive prior written consent of an assignment, transfer, conveyance, sublease or other disposition of contracts or monies under a contract let pursuant to article eleven of this chapter.
Such waiver may be granted under circumstances where the contractor verifies to the commissioner of general services or state agency, as applicable, that the assignment, transfer, conveyance, sublease or other disposition is due to but not necessarily limited to, a reorganization, merger or consolidation of the contractor's business entity or enterprise.
Part IV proposes three possible solutions to reintroduce fairness to the employer–employee relationship.
The first proposal requires corporations to consciously alter existing contracting practices to include right of preemption provisions.
Further, merely enumerating the invention may not sufficiently avoid assignment to the employer as the invention must truly be made—capable of being determined from the disclosure in the patent specification—and simple plain language conception is not enough to declare the invention made. [when] ‘he did [while still at MRI] combine the two chemicals which are claimed in the ‘344 patent.’” There, the lower court reinstated a preliminary injunction finding that the employee–inventor invented the reverse osmosis membrane while employed by Film Tec; however, the Federal Circuit reversed the issuance of the preliminary injunction because it determined that the patent did not belong to Film Tec but rather to the government.
Allied “allege[d] that Cadotte conceived his invention and formed the reverse osmosis membrane of the ‘344 patent earlier . (d) “Intellectual Property” means all inventions, discoveries, developments, writings, computer programs and related documentation, designs, ideas, and any other work product made or conceived by EMPLOYEE during the term of employment with MARATHON which (1) relate to the present or reasonably anticipated business of the MARATHON GROUP, or (2) were made or created with the use of Confidential Information or any equipment, supplies, or facilities of the MARATHON GROUP.