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ARTICLE · 15 APRIL 2008

Automatic Assignment Of Employee Rights Forecloses Certain Defenses

The U.S. Court of Appeals for the Federal Circuit announced that federal law partially controls the outcome in determining whether a patent assignment clause in an employment agreement applies to patents arguably developed outside the scope of employment.

United StatesIntellectual Property

The U.S. Court of Appeals for the Federal Circuit announced that federal law partially controls the outcome in determining whether a patent assignment clause in an employment agreement applies to patents arguably developed outside the scope of employment, DDB Technologies, L.L.C. v. MLB Advanced Media L.P., Case No. 07-1211 (Fed. Cir., Feb. 13, 2008) (Dyk J.; Newman, J. dissenting-in-part).

In 1980, Dr. David R. Barstow executed an employment agreement with Schlumberger Technology Corporation that stated, in part, the following:

4. Employee agrees to and does hereby grant and assign to Company ... his entire right, title and interest in and to ... inventions ...:

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