Who Owns The Patent?: The Validity Of Automatic Assignment Provisions

The U.S. Court of Appeals for the Federal Circuit is currently considering a petition for en banc rehearing of the "automatic patent assignment" rule announced in the Court's 1991 decision in FilmTec Corp. v. Allied-Signal, Inc. See Alexander Shukh v. Seagate Tech. (Fed. Cir. 2015) (en banc petition). In FilmTec, the Federal Circuit determined that a contract that assigns (i.e., "do hereby assign") potential future inventions from an employee/inventor to an employer is an effective transfer of title of those future inventions to the employer. These agreements are particularly helpful for employers, such as those in the automotive industry where employee migration is a fact of life. Having an employment agreement that includes an automatic assignment provision can mitigate some of the issues associated with obtaining assignments of inventions to the employer after an employee inventor has left the company, since one can argue that such inventions were prospectively