A recent Federal Circuit decision discussing the effect of an
Employee Intellectual Property Assignment Agreement upon the
ownership of inventions made by the employee (Preston v.
Marathon Oil Co., Nos. 2011-1013, -1026 (Fed. Cir. July 10,
2012) (decision here)) offers a number of practice pointers.
Marathon Oil had filed suit against Preston, its former employee,
claiming ownership of a patent obtained by Preston on an invention
made while Preston was employed by Marathon. The Federal Circuit
held that Marathon Oil was the rightful owner of the patent. The
useful lessons would appear to be as follows:
1. Refer to the IP
Assignment Agreement in the Offer Letter.
In this case, Preston had executed his IP Assignment Agreement
with Marathon Oil after he had accepted the written offer of
employment and started work. One of the questions at issue in the
case was whether Preston's continued at-will employment
constituted sufficient consideration to support the IP
