I like how Eric Guttag goes after legal ideas. I appreciate the way he digs into things, and his willingness to acknowledge when he needs to change his point of view. Some time ago, he posted an excellent discussion of the FilmTec decision in the context of Stanford v Roche, and just how far the magic of a “present assignment” ought to go. It’s worth the read. Guttag emphasizes the importance of getting at the fact set in S v R, and this in itself appears to be rather difficult to do. The question that burns throughout S v R is how to size up the status of assignments at the time that Stanford files its patent application. The CAFC looks at it and goes, “there’s only one assignment, and that’s to Cetus”. That assignment was the present assignment embedded in the Cetus Visitor’s Agreement. If that assignment fails, then Stanford’s later assignment becomes operative, and we are back to other issues, such as whether Stanford’s patents are even valid.
However, with the decision we get a strange mix of responses. On the one hand, we have questioning of the nature of present assignments, and in particular of the FilmTec decision, which features such an assignment. There’s plenty of practice that indicates that there are instances of well formed present assignments, such as in some publication agreements. If the asset to be created is clearly delimited, why should not an author or inventor be able to obligate his or her expectant rights in a work of authorship or invention? The question, though, is whether there’s something magically different about “hereby assign” over “will assign”. But here’s the rub: if a promise to assign is as good as the “hereby assign” to transfer title, then Cetus is still holding a valid agreement (which used *both* forms). If, however, “hereby assign” means nothing more than “I really, really do promise to assign in the future”, then one would have to follow up with an actual written assignment specifying the invention. Continue reading
