You may have read the recitals or introductory clauses in a
license or an assignment agreement. In most cases, these clauses
are just skimmed, if they are reviewed at all. In a recent decision
of the US Federal Circuit Court of Appeals, the court reviewed the
impact of the so-called "consideration" clause in an
assignment. In patent law, an assignment is a contract transferring
ownership of an invention by the inventors. This permits the
assignee (the party getting the invention, such as an
employer or a purchaser) to file a patent application as
the applicant and owner of the invention. This assignment document
is a contract, and so it must meet all the requirements of contract
law. One of those requirements is that there must be adequate
"consideration" - in other words, something of value that
flows to each party. It can be money, or something else of
value.
