Inventions Made for Hire
Joshua L. Simmons
Kirkland & Ellis LLP
2 N.Y.U. J. Intell. Prop. & Ent. L. 1
Despite the continued reliance on the rhetorical device that modern invention is performed by individual inventors in their garages, few would disagree that today most patentable inventive activity occurs in corporate and university settings and that most individuals who would be labeled “inventors” in the twenty-first century are employees of a corporate entity. Yet, while copyright law’s work made for hire doctrine automatically vests employers with ownership of works made within their employees’ scope of employment, except in a few limited circumstances, patent law continues to require a written assignment of the rights to a patented invention.
This difference between copyright law and patent law can be explained by the differences between the needs of the two disciplines in the nineteenth century that led to their modern formulations. In particular, whereas copyrighted works in the nineteenth century were frequently created by multiple individuals working together, which necessitated the collecting of rights in order to make use of the resulting copyrightable work, patentable inventions were almost exclusively perceived to be invented by individuals. Moreover, patent law developed doctrines that provided some limited rights to inventors’ employers.
Yet, despite extensive change in the perception of the nature of inventive activity since the nineteenth century, patent law has remained stuck in the past. Patent law’s failure to modernize and develop an inventions made for hire doctrine has led to a string of significant court opinions holding that employers had not received adequate assignments to their employees’ patented inventions, despite the parties’ intentions to the contrary. In order to resolve these issues and bring patent law into the twenty-first century, the Patent Act should be amended to borrow from the Copyright Act and adopt a principle similar to the work made for hire doctrine that would grant employers the rights to their employees’ inventions made within the scope of their employment.
Number of Pages in PDF File: 51
Keywords: intellectual property, copyright, patent, work made for hire, invention, nineteenth centuryAccepted Paper Series
Date posted: November 30, 2012
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