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JOURNAL

of the

PATENT
OFFICE
SOCIETY

Published monthly by members of the Patent Office Society
MILTON WEISSMAN, Editor-in-Chief

PETER D. ROSENBERG, Associate Editor
STEVEN E. LIPMAN, Associate Editor
J. ROBERT LARGEN, Business Manager
NANCY HENDERSON, Assistant Business Manager
L. VLACHOS, Subscription Manager
HERBERT T. CARTER, Advertising Manager

LEON E. ZITVER, (Ch.)

BOARD OF DIRECTORS

THOMAS H. WEBB

WILLIAM WAINER

BOARD OF DIRECTORS

A medium of expression for the exchange of thought in the fields of Patents, Trademarks and Copyrights; a forum for the presentation and discussion of legal and technical subjects relating to the useful arts; a periodical for the dissemination of knowledge of the functional attributes of the patent, trademark, and copyright laws, in order to "ffect a more uniform practice thereof and through which all interested in the development and appreciation thereof may work to a common end.

Vol. 56

July 1974

No. 7

Publication of signed articles in this JOURNAL is not to be understood as an doption by the Patent Office Society of the views expressed therein.

Office of Publication, 104 Academy Ave., Federalsburg, Md. Entered as second class matter, February 12, 1932, at the post office at Federalsburg. Md., under the act of March 3, 1879.

1974 by the Patent Office Society

CONTENTS

ATENT

Common Burdens Of Woe

411

-C. W. Smith

Foreign Patent Applications Claiming Priority
Based On A U.S. Application: Are They
"Prior Art" Under 35 U.S.C. 102(g)?

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THE PATENT OFFICE SOCIETY ANNOUNCES

THE THIRD ANNUAL

JOSEPH ROSSMAN MEMORIAL AWARD

FOR THE BEST ARTICLE PUBLISHED IN THE JOURNAL BETWEEN JULY 1974 AND JUNE 1975 ON A TOPIC OF IMPORTANCE TO THE PATENT SYSTEM

Amount of Award: Five hundred dollars.

Eligibility:

Procedure:

All articles appearing in the Journal of the Patent Office Society during the period beginning with the issue of July 1974 and ending with the issue of June 1975 automatically will receive consideration for the award. All authors are eligible without regard to membership in the Patent Office Society or employment by the Patent Office.

The selection will be made by a panel of three judges. The award will be presented in the fall of 1975. In addition to the monetary award, an appropriate certificate will be presented.

The Joseph Rossman Memorial Award was founded in honor of Dr. Joseph Rossman, 1899-1972, former Editor-in-Chief and frequent contributor to the Journal. The award is given annually and is supported by the Patent Office Society and by friends of Dr. Rossman and the Society. Any inquiries concerning the award should be addressed to the President of the Patent Office Society, Box 2089, Eads Station, Arlington, Virginia 22202.

:648

Neal Orkin

Journal of the Patent Office Society

THE LEGAL RIGHTS OF THE
EMPLOYED INVENTOR: NEW

APPROACHES TO OLD
PROBLEMS (PART I)

INTRODUCTION

Throughout the history of the United States, the courts have consistently expanded the rights of the individual-with one possible exception-the rights of the employed inventor.1 Most American employed inventors must, as a condition of employment, assign their patent rights to their employers upon commencement of employment. Absent a statutory remedy such as exists in most European countries,2 the American employed inventor presently has no administrative or judicial remedy to obtain compensation beyond his salary for his labors; in most cases, his only additional compensation is a possible token grant from his employer.

It is the purpose of this paper to present four different approaches to employed inventor rights in the United States: (1) the status or common law approach which exists in the absence of a contract of assignment between employee and employer; (2) the contractual approach in which the employee assigns future patent rights to his employer through a contractual agreement; (3) the legislative approach in which employees are granted compensation through statutorily decreed schemes; and (4) a constitutional approach to employed

Student, Temple Univ. School of Law, Operations Research Analyst, Naval Air Development Center, Warminister, Pennsylvania. 1 Courts have to some extent expanded employed inventor rights, but only in areas in which agreements such as trailer clause contracts have been used to hinder the individual from freely making a living or changing employers. Courts have largely ignored other public policy arguments. See for example Guth V. Minnesota Mining & Mfg. Co., 72 F.2d 385, (1934), in which the court invalidated portions of an agreement in which the provisions were limitless in the extent of time and subject matter; however, the court upheld the other portions of the contract which required the employee to assign to his employer patents produced in the course of employment. 2 See Section III, infra.

October, 1974, Vol. 56, No. 10

649

inventor rights which includes a discussion of the constitutionality of proposed legislation and an attempt at formulating a new judicial remedy in favor of the employed inventor based wholly on constitutional law.

I. STATUS APPROACH &

The basic status approach, in the absence of any express or implied contract, stemmed from the masterservant relationship. The doctrine is based on courtmade rules of law which examine the relationship between employer and employee.

If an employee was specifically hired to invent or whose assigned duty was to devote his efforts to a particular problem in the course of his employment, the employee is bound to assign the resulting invention to his employer. However, where the employee is not hired to invent, or where an invention is conceived independently of the employee's job, such as at home or in non-job related areas, the employer is not entitled to an assignment of the patent. If the invention results from both employer and employee contribution, such as the use of employer's facilities, then the patent belongs to the employee subject to a "shop right" in the employer. The shop right consists of a non-exclusive, non-assignable, royalty-free license to the employer to use the invention for the life of the patent." Since there exists three determinations for invention ownership,

3 I have decided to title this portion of the paper as "Status Approach" while many other authors use the term "common law" (See Neumeyer, note 7, infra.). I have done this in order to combine both the status and contractual approaches later in the paper into "federal common law" and have therefore attempted to clarify the issues by not utilizing a double reference to "common law" (see Section IV, infra.).

4 Standard Parts v. Peck, 264 U.S. 52 (1924); Hebbard v. American Zinc, Lead and Smelting Co., 161 F.2d 339 (1947).

5 Dovel v. Sloss-Sheffield Steel & Iron Co., 139 F.2d 36 (1943); Deforest v. Owens, 49 F.2d 826 (1931); Howard v. Howe, 61 F.2d 577 (1932).

6 U.S. v. Dubilier Condenser Corp., 289 U.S. 178 (1933); Toner v. Sobelman, 86 F. Supp. 369 (1949).

7 For a more detailed discussion of the Common Law Doctrine, see: Neumeyer, "The Employed Inventor in the United States", MIT Press, 1971, p. 41-43.

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