Unknown Speaker  0:00  
Good afternoon and welcome to today's webinar assignments, the Bad and the Ugly presented by Autumn. My name is Samantha Spiegel, autumns professional development manager and I will be your staff host today. All lines have been muted to ensure high quality audio and today's session is being recorded. If you have a question for our panelists, we encourage you to use the q&a feature rather than the chat feature. If you have a technical question about the software or a comment, then you can feel free to use the chat. Today's session may be eligible for CLE credit. Throughout the webinar, you will see pop up surveys that are simply asking for a yes or no answer. If you do not intend to apply for CLE credits, you may dismiss the polls by clicking on the X on the top right of the corner of that window. If you do intend to apply for CLE, you must answer the question as it is answered. For more information about CLE eligibility for this session or what states have already approved this program, please feel free to contact me directly. Before we begin, I would like to take a moment to acknowledge and thank autumns 2021, online professional development sponsor, we appreciate your ongoing support. And I now have the pleasure of introducing you to today's presenters. Maura O'Connell is a European patent attorney and a European trademark attorney, as well as a registered patent and trademark agent in Ireland. She has considerable experience in general intellectual property practice, including broad experience in oral hearings opposition's and appeals both at the European Patent Office and at the national Irish Patents Office. Mara has been with Mr. Kelly's since 1987, where she handles the chemical medical device, biotech and pharmaceutical work both at home and abroad for several of the larger indigenous Irish universities and companies. Dr. Makita Caden is part of the University of Tennessee Health Science Center team. She is responsible for managing and licensing University Technology, as well as preparing and reviewing research related contracts such as material transfer, research and confidentiality agreements. She also provides legal support and advice to UTRs licensing staff. As a registered patent attorney lucky to provide strategic support for drafting and prosecuting patents and applications on new disclosures from across the UT System. She holds a PhD in chemistry from Auburn University, and a JD from the University of Memphis. And finally, we are joined by Michael Witcher. Michael is an associate with Riker drinker and helps clients protect him profit from their innovations, he prepares and prosecutes patent applications and advises clients on patent strategy, portfolio management and matters such as patents about validity, and freedom to operate. Michael works with clients across many technical industries, including bio technology, pharmaceuticals, and Agriculture and Food Science. Michael leverages a background in pharmacology and biology to enhance his work on technical patent applications. Before attending law school, he earned his PhD at the University of Nevada. Hello,

Unknown Speaker  3:05  
and welcome to all of you that have joined today. The title of this is assignments, the bad and the ugly. And the reason for that is that there isn't too much that people are going to say that's good about assignments. And certainly we're not here to talk about that. We're here to talk about what has gone wrong, and to hopefully give you a steer as to how to avoid those issues. So there's two parts to the talk today. The first is dealing with the Biko Act and rules and the amendments in 2018. And then the second is how to have an effective assignment in the US and indeed in Europe. And just the three of us are lucky to Cavan, who's from University of Tennessee, he's going to be talking about the Bible Act and rules and she'll be talking first, and then Mike butcher and myself more Connell will be spending the rest of the time talking about assignments in the US and in Europe.

Unknown Speaker  4:11  
All right. Thank you, Mara. Hello, everyone. I hope everyone is doing well. So as Mark mentioned, I will start us off by revisiting Assange. And in that, I will give us a very short review and reminder of the Supreme Court decision in standard V. Roche, which addressed a long standing issue with some universities regarding the assignment of rights and federally funded inventions that are developed by university employees. And without going into all the details about this case, the court's decision here made it pretty clear that universities should obtain a president's assignments from employees as opposed to some agreement to assign those rights in those inventions at a later day. And this is because according to US patent law, titled to an invention belongs to an inventor or inventors if there is more than one inventor and Stanford, I think, probably like a lot of other universities mistakenly interpreted and believed that somehow the bipedal acts protected their IP rights by automatically granting to the university IP ownership and title to those federally funded inventions. The court held that an invention or title to an invention belongs to the inventor, hence the importance of obtaining a present assignment because the inventor could inadvertently assign his or her rights to another entity, before assigning those rights to their university employer, as was the case in Stanford. So, to comport with the ruling in Stanford in 2018, the bipedal Act was revised to obligate the contractor, ie the university in our case, to obligate the university to require its employees to execute a present assignment of those rights in federally funded inventions to the university

Unknown Speaker  6:25  
to advance smart things advancing pause.

Unknown Speaker  6:46  
So the revisions to buy doll serve to implement several goals, one of which is to implement the requirement to obtain and assignments and that's going to be our focus here. So the agreements that are affected by this revision include those funding agreements that are executed after the revision date of May 14 2018, as well as any existing agreements that might be amended after that effective date. Now, the major revision in Bible in the Bible Act came to the standard patent rights clause. And not only is disclosure of an invention required, but now this clause explicitly requires the university to obtain an assignment of rights in those inventions that are made under the contract to the university. And the assignment must be written. So there must be a written agreement to effectuate that assignment. And the clause also calls for the execution of any other necessary paperwork in transferring those rights to the university. Now, looking at the language in the clause before and after the 2018 Amendment, we see the difference is the new language of the required assignment, which is highlighted in red and circled here. And looking at these two versions, we see that the disclosure requirements was always there. And it's retained in this amended version. But again, we see this new assignment language in the amended version. And again, notice that this obligation is placed on the contractor, the university as a requirements as a recipient of federal funding. Now, let's refer back to the Stanford decision where again, the Court held that title to an invention belongs to the inventor, even where the inventor is employed by a contractor working under Abidal. So, this the amendment that we're discussing, the viola amendment follows this decision in Stanford, and it further clarifies the issue of ownership of those federally funded inventions. And it illustrates I think, pretty clearly here that bipedal does not and did not operate such that the university ownership in these inventions is automatic, and that's why the amendment was made because that those rights in federally funded inventions is not automatic under vital. And so what we learn from the stand for for Stanford ruling, if it wasn't clear in the original, vital Act, is that outside of an agreement, ownership Initially this with the inventor, again following basic patent law rules. So let me just stress again that assignments are really important for universities when it comes to claiming title to those federally funded inventions assignments protect the university's rights. And this amendment helps universities to avoid the problem that occurred in Stanford. So hopefully universities are following this requirement to obtain an assignment. So now that we have this requirement to assign what language is necessary to effectuate a present assignment, the transfer of those rights. So there should definitely be assignment language that indicates presence and active assignment, not a promise to assign. This assignment doesn't need to take place in a later agreement. But there needs to be a present assignment. And when we say present assignment, we're really referring to an assignment that's going to take place in an employment agreement upon hire, or some other separate IP agreement that's going to be signed at the same time that an employee is hired. Now, if that's not the case, if there's no active assignment that takes place at the time of hiring, then one needs to be obtained as soon as possible via either an IP agreement or an invention assignment agreement. And that agreement needs to cover the entire term of that employee's employment. So it needs to be retrospective. That agreement should also contain adequate consideration whether it's some nominal monetary amount, or continued employment can be the consideration, or even the right to share in any revenue that's generated from licensing of that particular invention. That's an issue. But the key here is to obtain active presence, assignment language or an assignment from the employee as soon as possible, and that as soon as possible, really should be up on hire.

Unknown Speaker  12:20  
Even after Stanford, a lot of universities that didn't already have any kind of IP agreements in place, didn't do anything to avoid being the next Stanford, even my university, the University of Tennessee. So this new mandate did help to start universities thinking about plugging that hole. And so ut actually saw this as an opportunity to plug that hole in to make sure that it was being assigned rights in those subject inventions. And so to apply, UT implemented this acknowledgement and agreement document, and which you can see this particular document, which is an agreement, it contains that present active assignment language, I hereby assign and transfer. Previously, what you see had done is relied upon its IP policy, which created an obligation to assign inventions and creations as defined by the policy. But an actual assignment did not occur until the time of disclosure of the invention. And sometimes it would be even later on after the disclosure was made. So the way that UT implement it, this particular agreement, it emailed it to all the UT staff across the UT System at all campuses. And after it was instituted within the first year, the compliance rate with this execution was only about 25% across all campuses. But now it almost three years later, we have where most campuses are at almost 50% And most of them are above 80% compliance on getting this document executed by all the staff at the university. And to drive the compliance, the university sends out a weekly reminder and an email reminder every week to those staff who have not executed this agreement. And the other way that the university is trying to drive compliance is that is that the Grant's office makes a note of who has signed this agreement and who has not, and they can further monitor when federal grants are submitted and they can request the researcher at the time of submitting that federal grant that if they haven't already signed this agreement that they must sign it before that grant can be submitted. So I hope that my Most universities have something like this agreement in place if they don't already have employment agreements. So this way we can ensure or the universities can ensure that those rights in federally funded inventions are assigned at the appropriate time. So when it comes to patent filings, typically there is an assignment that accompanies the patent filings because the patent attorney will make sure that an assignment gets executed. And in those assignments, each inventor should sign the assignment agreements for each particular patent application. And that agreement is going to list all the information about that invention, information like the title and the application number. Therefore, there's no question about which patent rights are being transferred to the University. And this document is one that can be recorded with the USPTO so that it can put others on notice of who owns the IP rights in a particular patent or patent application. So in summary, I just want to stress the importance of universities obtaining present assignments of federally funded inventions or other inventions to which the university may have rights, ownership rights, and these assignments should occur at the time of employment, ideally, that's when the assignment should take place. And for those seasons, employees, where there is no employment agreements, assigning such rights, a present assignment should be obtained as soon as possible, including having a mechanism in place to ensure that compliance is met with the requirement of having those inventions or the rights and those inventions assigned to the university. And so with that, I will now turn it over to Mike who will talk to us about patent ownership.

Unknown Speaker  17:08  
Thank you, Nikita, I'm going to reiterate some of the key points and also discuss some of the case law that the resulted in those requirements. And first, starting with patent ownership. Ownership, of course, affords the patent owner the right to exclude others from making using offering for sale or importing the invention. So those rights come with ownership. joint owners, so for example, two or more inventors, or perhaps one inventor and a university, each have the right to make use offer to sell or sell the patented invention or import the invention. Now, this does not require consent of the other co owners so each co owner has those rights individually. And further, each co owner may individually license the patent and compete with their CO owners. So you can see where this could cause issues. And we'll get into some of this when discussing the case law. Why it's important to get assignments from all inventors. However, one area where CO inventors cannot individually act is when suing for infringement, all co owners must join be joined in an infringement suit. In the US, patent rights are generally held by the inventor unless assigned to for example, the university post AIA which we'll discuss a little bit more on the next slide, made some changes so that the inventors don't need to be the applicants in the patent, but rather that the applicant can be an entity such as the University, and it's that original applicant that is assumed to be the initial owner. The law of of assignments is governed by state law as they are IT contracts. However, there are some federal inputs there as to ownership as lucky to discuss in discussing Stanford V. Roche. And I'll rehash that again briefly. However, elsewhere. So outside the US patent rights are generally held by the employer, for example, the university and Mara will expand on this for us later. As I was mentioning, prior to September 16 2012, inventors were generally the applicants in any patent application. However, after this date, the inventors no longer need to be listed as the applicant. The acid is somebody showing proprietary interest in the patent can be the applicant. So a non inventor applicant must however show sufficient proprietary interest in that invention. This can result from An assignment, or it can result from a promise to assign. So a person who the inventor is obligated to assign by, for example, an employment agreement. The applicant, the non inventor, applicant can also be a legal representative of the inventors, or a person who otherwise shows sufficient proprietary interest in the invention. Now, why is this advantageous? Well, the applicants can prosecute the patent application without further permission from the inventor. So if you have an inventor leave the institution or is uncooperative, the applicant can still proceed with the application and obtain a patent. So again, any patent that issues has generally belonged to the inventor, however, this is unless a written assignment is provided from the inventor or the inventors estate to the entity. So again, this allows the entity to prosecute and obtain a patent.

Unknown Speaker  21:07  
And I'm just gonna go go over Stanford erosion lucky to did a really good job of doing that. So I won't take too much time, but I will sort of describe the facts a little bit more. So Stanford sued Roche for allegedly for infringing Stanford's patents directed to HIV diagnostics. Roche, however counterclaimed that it jointly owned those patents due to an agreement that the Stanford faculty member Dr. Kolodny, signed in the late 1980s, when he was doing research at Cetus, which was later acquired by Roche. So in Dr. Kalani is agreement with Stanford, he had the language that you can see here, the language reads, He agrees to assign to Stanford his right title and interest in inventions resulting from his employment at the university. So this amounts to a promise to assign to Stanford. However, when he was doing some work at Cetus, his labs, he entered into agreement with Cetus, that had the following language that he will assign and does hereby assign. So there you have that act of language to see this has right title and interest in each of the ideas, inventions and improvements made as a consequence of his access to Cetus. So there you have an actual present assignment to see this of future rights in Dr. helot news inventions. At the Federal Circuit, the Court held that the language agree to assign was merely a promise, the contract language does hereby assign that doctrine a lot. And he agreed to with Cetus provided a present assignment, giving Cetus immediate rights and helot news future inventions Cetus. And therefore, Roche had thus acquired the rights to those same three patents that were being asserted against them. By the time hold on, he had finally executed agreements to Stanford. So he did eventually sign an assignment to Stanford, his rights had already transferred to see this. So at that time, when he transferred have tried to transfer rights to Stanford, he didn't have rights and those inventions they had already been effectively assigned to see this. So Stanford appealed to the Supreme Supreme Court. And as liketo mentioned, they argued that the Bible overrides normal ownership of inventions and results in ownership align with the institution or the university, the majority of decision found that, indeed, a patent rights have always initially invested in the inventor. And that's been a since the 1790s. And the nonspecific language of the by Dole Act of 1980, did nothing to change that. So some key takeaways is that securing ownership is essential to ensuring controlling rights in into inventions made by university employees. So prior to the 2018, changes to the rules of the by Dole Act, this was of course, the best practice of ensuring that you obtain those rights. However, with a rule change, this now becomes a requirement for universities and other institutions functioning under the Bible act to have their employees affect that assignment. So this takes me to another case, AV T vs. HTC. And this case has some different implications. So going through the facts to bring everyone up to speed AVC, filed the patent application in 1995. All three inventors had a contractual obligation to sign to their employer which was info chips Who by a series of transfers assigns the invention to a VC. One inventor, however, held out and refused to affect a later assignment. So all that was in effect there for that one inventor was that contractual obligation to assign the USPTO in view of certain evidence presented by ABC allowed ABC to prosecute the application. So ABC filed a petition that was supported by info chips as employment agreement, which we will see some language from here in a moment, as well as documents showing the tape chain of title culminating in ABCs purported ownership. So, a ve T acquired ownership of the patent through assignments from a VT ace VC, excuse me. So AV T asserted that the three portions of the employment agreement between Mrs soon and info chips included a will assign a provision, a trust provision and a quitclaim provision. So they asserted that these provisions amounted to an assignment to well info chips at the time. So through that series of transfers, abt thus properly obtained ownership of the patent. And here you can see the language from the employment agreement. So here we have a will hold in trust provision, a will assign provision, and finally a quit claim provision.

Unknown Speaker  26:49  
Now, the district court was unconvinced that that agreement effected any transfer in the rights to any inventions by Miss soon to info chips. And the federal court agreed. In dealing with each of those provisions, they indicated that the will assign provision merely was a promise to do something in the future, it did not affect a present assignment. This is very similar situation to what we saw in Stanford V. Roche, the interest provision. Well, the court found that the inventor could not simultaneously assign their rights and hold them interest at the same time, so you can't maintain rights and assign them at the same time, and the quitclaim provision, the court dealt with this, and found that the language assigned here under was understood to apply to and assumes ownership rights that she had actually assigned. But that did not occur. So she gave up her rights in those. And the patent infringement suit was dismissed as there was no proper assignment from as soon to info chips and effectively to abt, the company would have a first had to bring a state law based claim to enforce the will assign provision. So Miss soon did agree to signing an assignment in the future, but did not actively assign any future inventions. So AV T, would have had to assert that document in that contract in order to obtain them as soon as assignment. Now, as I mentioned before, all co owners of the patent must be parties to an infringement suit. Here Miss soon was effectively a co owner because she had not assigned her rights. So because she was not a party, the infringement suit was dismissed. So you can see the implications here of not obtaining proper assignments. And again, and we can't stress this enough that a will assign provision is not a is a promise to assign and not an actual assignment. So the solution, of course, is to use active language as stressed by liketo. Earlier, the agreement should indicate the employee not only will assign but hereby assigns their ownership interest in future inventions. So here, I have an example of a clause from a collaboration agreement, and we'll go through this and discuss the implications. So here the collaboration agreement reads the collaborator will own the electoral intellectual property rights in the results and may take such steps, as it may decide to, to file a patent and, and prosecute those patents. So what is the effect of this type of language? Well, the future intellectual property rights automatically belong to the collaborator Without formally without further formality or documentation in Europe, the answer could be yes. However, in the US, it is likely very likely no. So again, we have here a promise to assign an inch As mentioned, the inventors have traditionally been required to make a patent application in the US, but after amendment 235 USC 118. So, after the AIA, a person whom then enter has assigned or is under an obligation to assign may make an application for patent. So we've discussed this already, and that now the, the entity can be the applicant, which is advantageous. Here in this clause, the wording refers to assigning the invention rather than granting a patent to someone who is entitled to it by virtue of, for example, a collaboration agreement. So that collaboration agreement didn't constitute an assignment, as there is no effective assignment, it was just a promise to assign.

Unknown Speaker  31:11  
Here, we'll go through a couple of questions. And on the next slide, we'll discuss the answers. First question is, if you say agrees to assign, does this imply that a further assignment needs to be executed once the IP comes into existence? What language should you use in the contract to assign future IP? Well, the law recognize a president assignments of IP that doesn't yet exist. So the answers to these questions, if you've been paying attention, is in the first one, if you agree to assign is merely a promise to assign is not a current assignment of rights. So what language should be used in order to assign future rights? Active assigning language such as hereby assigns should be used? And will the law recognize a present assignment of IP that doesn't exist? Yes, if actively assigned, and again, with consideration. With that, I'd like to turn it over to Maura.

Unknown Speaker  32:11  
Thank you. And so just to make things a little bit more complicated, as Mike has already alluded to, and the situation is different outside of the US, so just to bear it in mind, even though it's not your primary market. And so this, the first slide here is talking about pretty standard language that's going to appear in an employment contract on this side of the pond, and it can be an employment contract with a commercial company. And the one that was litigated here was the employer was Smith and Nephew, medical device company, but it can equally be a university. So this is very standard for, for employees who are actively in the business of making inventions, they would have in their in their in their employment contract language, saying I hereby assign and I agree to assign to the company. So that's to the employer, and everything that comes out of my brain, after I've signed this agreement. And, and this is reflected in patents acts in the different countries in Europe, and I've referred here particularly to the UK Patents Act. And, and so this language is considered to mean that it is not just possible to assign the legal title as in the ownership. But it's also possible to assign the beneficial interest using this kind of future language insofar as it relates to an employment contract. And the next slide then goes a little bit further here, because now we're talking about a situation similar to what Mike was talking about, in terms of an overall collaboration agreement. Something it's very good to be very common from a university perspective, where there may be inventors within the university, and then separate from that there is a research agreement between the university and usually a commercial third party. And you're going to see this kind of language show up on in Europe in such a collaboration agreement. Where again, there's a future terminal, where inventions that have yet to be made, but are made under this collaboration agreement will belong to the person who's paying for the contractor. Next slide. And so again, again, then, just to to make this point clear, in distinction from what happens in the US. In Europe, such a collaboration agreement, doesn't need a former signature from the inventors. And such such a ownership in this situation can transfer from the inventors, through the university by way of the employment contracts of the inventors, with the university and then from the university. To the third party by way of this overall agreement. So a collaboration agreement, in this case with the language we've just been talking about, is effective to transfer future rights from a university inventor through to the collaboration. And then just to to conclude here, from the European perspective, this would be the assumption I will be working on in relation to a university invention. If an inventor is employed by the university, and the inventor makes an invention in the course of their normal duties, or duties that are considered as having been assigned to that person. The assumption the working assumption everybody works on is going to be that the invention is owned by the employer. So there's a future assignment taking place there. Thank you.

Unknown Speaker  35:58  
So what needs to be in an assignment? Well, under contract law, an assignment must be in writing, identify both parties that are subject to the well the both parties, so the assignor and assignee, it identify the asset being transferred. So whether it's the invention or the patent application, and indicate the consideration for transfer of the asset. In most jurisdictions, the consideration can be a sum of money or by virtue of a of a contract for employment. So most jurisdictions will recognize continued employment as sufficient consideration, but all of this should be included in your actual assignment. This, so, while we do have ideally a present assignment of rights occurring in either the employment agreement or an IP policy, a confirmatory assignment, like liketo mentioned for each application or invention should be executed. When preparing the assignment, please be careful and pay attention to the details, they do matter. So as I mentioned, both parties need to be named and they need to be properly named. A asked me should be the actual ASIC knee, not a parent company and not a not a subsidiary, it should be who will actually be the owner of the patent. And be sure to pay attention to the details, including punctuation. My firm has had issues where punctuation has has been off, and it has not been properly recognized to be a proper assignment to that company. We're now spending a ton of time going back and doing confirmatory assignments, including the proper name, including, again, punctuation, so those details do matter. So when preparing and executing these hopefully confirmatory assignments, or perhaps initial assignments, please do be careful to those details and make sure that those are all correct. And I'll turn it back over tomorrow.

Unknown Speaker  38:10  
So on this slide, the really significant point of difference between an assignment and assignment requirements at EPO relative to the USPTO is in point one there, the assignment must be signed by both parties. So I'll make that point first. And I will, I will, I apologize in advance make it more than once, because I get quite a lot of assignments come in, which are all perfectly executed from a US perspective, and, but they don't have the contract signature. So I want to hammer home that point of getting a signature on behalf of the assignee. So in this first slide, here, we're talking about a situation where you want to do a transfer of ownership between the original priority application and the filing of the PCT. And in that situation, you want to have an assignment that is signed by both parties. Another common thing that I see happen that goes wrong is that the assignment is not signed by both parties before the PCT filing date. Very important. And then the second point there is that when you're talking about transferring a right before the PCT is filed, the assignment must include the language about transferring the right to claim priority. Assignments after the PCT day don't need to include that language. If you're if you're transferring ownership between the US priority applicant and the PCT applicant, make sure that your standard assignment language, which you probably haven't looked at in Young's make sure that it actually has that flaws in it, including the right to claim priority. So the second situation then when you might want to be transferring a right would be after the PCT is filed. And so that can be after the PCT is filed and during the international phase, or it can be after the PCT is filed and after the international phase. But one way or the other if the assignment is going to be presented to the EPO for record or it's going to need to be signed by both parties. But I've left out the second requirement that it needs to show that the right to claim priority has been transferred. Because that's redundant in this situation, the PCT is already filed. Now, there's a lot of information on this slide. So I'm not going to go through all of it. But what I will say is that the EPO, they require the actual name of the person who has signed for each party to be identified legibly, and that can either be legibly on the patent document or the information can in fact be provided separately to the EPO. You also need to identify the signing position. We all got very comfortable with using authorized signatory. But the EPL cracked down on that a couple of years ago, and they now require you to identify the actual signing position. Again, the signing position can be indicated on the assignment document or provided in a separate cover note. And so if you if you give us a signing position that's like CEO or CFO or CEO, then the EPO won't ask for documentary proof of the authority. They're just just the kind of threats that they have in their back pocket if you put down something there that they think isn't acceptable. And one other thing, they do not accept electronic signatures, which is a bit of a nuisance at the moment, and they specifically don't accept Docusign. And one of one of the more positive things then is that at least they don't require an original assignment, which at the moment is a complete nuisance, and they will accept a PDF. And print the EPO itself doesn't require witness signatures, or it doesn't require that the document be legalized. So signature signature on behalf of each of the parties. And and it should be a real signature rather than an electronic signature. Dan, I'm just saying the same thing here. Again, both parties need to sign. And ideally, it should be signed before one or two witnesses. But it's not an actual requirement at the EPO. And I'm sure Mike would want me to say at this point that us best practice will be to have those signatures notarized. And but that's not necessarily from that from the EPO perspective. Again, same message as US active language. And if you're fine if you're assigning before the PCT make sure you include this right to claim priority. Same as Mike and lucky to have said, included consideration. This is just a standard contract. It needs two parties to be identified, it needs the asset to be identified. And something akin to money or a consideration needs to change hands. It doesn't have to be actually money. As Mike has already said it can be by virtue of an employment contract. But there has to be an asset identified a giving party, a receiving party and something changing hands. The point here really rates relate to the Paris Convention, which is something we all take advantage of every day in that we find application in one country. And then we have a 12 month window within which to file the late the other applications. And we can claim priority. This claiming a priority has come out of a very old convention, the Paris Convention signed in Paris. And and we because we use it every day, we probably don't fully appreciate the significance that comes out of of using this app this right to claim priority. But the two tech homes are two alternative ways of not getting yourself in the problem that I'm going to be talking about later. The first way is to always file the PCT application, naming the Priority applicants as PCT applicants, so if you're a PCT applicants if your Priority applicants I'm sorry, are A B, C and D. Just make sure that a b, c and d are also listed as PCT applicants, you can have a F, E, F, G and H as extra PCT applicants, not a problem. But if ABC and D are Priority applicants, if you're going to follow this first route, then A, B, C and D also have to be PCT applicants. The other way of getting yourself out of the problem we're going to be talking about later, is if you have a, b, c and d as your Priority applicants, that you have an assignment from them, including the right to claim priority, and under that assignment is signed and dated up before the PCT is filed. And that can allow you then to file the PCT in a completely different name. But you have an assignment to backup that ABC and D have transferred the rights in the invention, including the priority right to this new assignee. So this is only the same same the same thing again, and I know I'm I know, I'm really laboring the point, the protected the point that I want to make now relates to the second point on this slide. And that is, if you name in this case, d as a priority applicant, that is decisive for a dot that person or that entity having a right to claim priority. And if you don't subsequently tie that up with an assignment to the PCT applicant, you're going to get yourself in trouble. It doesn't matter if you subsequently claim that D shouldn't have been named as a priority applicant wasn't an inventor, or whatever, it doesn't matter. The fact is, if D is named as a priority applicant, then you need to tie up his or her rights with an assignment. So I'm going to be explaining this by way of two case studies, both in relation to CRISPR. And it's also interesting from a university perspective that two research teams were working on very closely similar technology at around the same time, and have come into conflict with with each other. So broadly speaking, when I shouldn't use the word broader, but generally speaking, then there is the West Coast camp of the UCB. And then there's the East Coast camp of broad MIT and Harvard. So let's look at the good guys. First of all, the West Coast camp, who got their assignments trail done correctly, and for whom the right to claim priority was not challenged. So just to give you some specifics, so that they would these people were the first to file an application on the CRISPR technology in May 2012. For inventors were named and there was no assignee. And they a month later, they got their word published in Science. And then,

Unknown Speaker  48:09  
less than a year later, they filed their PCT. Now, the bottom bullet point here is incorrect in that, when they filed a PCT, they named all four of the Priority applicants. So genetic data, sharp, anterior and Szalinski as PCT applicants and PCT inventors, and they added in two extra PCT applicants, University of California and University of Vienna, so A, B, C, and D appear on the priority application, and ABC and D are also listed as PCT applicants. And then they join the international phase, which is a very forgiving phase, if you find that there are things that need to be fixed. So please, as a completely separate point, make sure to use that 18 month period to sort out anything that you can, because any changes that you make during that international phase will apply automatically in the different countries, whether it's Japan, Europe, whatever. And so in this particular case, Jennifer data was indicated by mistake as an applicant. And they corrected that applicant and adventure, no problem. And then subsequently, all of the inventors except one assigned the applicant rights to one of the universities. One of the inventors held Irish and that's shorthand j. So the current ownership on a DPO for this invention is University of California University of Vienna, Sheriff NTA. Department was was granted and it was opposed by seven opponents. Seven is a laugh but it's not the worst is same app, but it does suggest, you know, a challenging path for for this invention. What is interesting is that this UCB invention, it was not challenged on the basis of the right to claim priority, it couldn't have been challenged, because ABC and D were listed as the Priority applicants, and they remained as the PCT applicants, there was a limitation made during opposition. But that was only to exclude modifying the germline of a human being not really a limitation as such, their RFP is ongoing. So there's no there's no final answer there. But the fact that the right to claim priority was not challenged in the opposition level, means that it can't be challenged now in the appeal level. So these were the good guys state, they got their paperwork straight. And the priority, they didn't trip on the priority, landline. Again, making the same point. If you're either keep all your Priority applicants as PCT applicants, and that's what happened here, or make sure you have an assignment in place. And if you do either of those, the right to claim priority won't be challenged. And I'm sure you're asking yourself, surely this is just a pedantic argument about the right to claim priority. But on the next case study, you'll see that it was it was devastation. So the other group who were working on CRISPR technology, we're on the East Coast, so broad, MIT, Harvard, and the first couple of applications listed for inventors, as inventors and as applicant. And it's the last of them that I just want you to focus on and that's Professor mera Fini from Rockefeller. Then a PCT was filed. And this is all looking very normal so far. Until you go and look at the PCT request form. And the PCT you on the PCT request from Professor Mr. Feeny has disappeared as as an inventor or as an applicant. And there was no paper chain provided to show that he had he was listed in error as an inventor or that he had assigned his rights to the PCT applicants. And again, as per the ECB case, the International phase was was very accommodation, adventure switched from applicant and advantage to inventor only the applicants changed no problem with any of them. The only problem that did remain was Professor Murphy that was an inventor on the area us applications was was no longer an inventor and hadn't assigned his rights by the time the PCT was filed. So as per US v. Broad had been granted patents on this particular patent is one of several, including divisions that God had filed nine opponents against suggesting that there's a bit of competition going on in this area. What's different here, though, is that the patent was revoked. And the decision was, what might otherwise you might have thought was an academic point. But it was on the point of where it was broad and the other patentees were they entitled to claim priority? Here we come back to Mr. Feeny Professor Murphy again, the first few applications were filed in the name of inventors including Mr. Feeny. And each of those inventors, as as applicants had a right to claim priority under PCT. Applicants and EPO applicants and patentee couldn't show that they had somehow acquired the right to claim priority from Professor Murphy. So this, again, is not an app, an academic point, because once these two priority dates of the 12th of December 2012, and the second of January 2013. Were just claimed they were considered ignored by the EPO. The application was given a later date. And the way that the broad tried to argue around Professor Mr. Feeny was that the national law should apply to the US law under Professor Murphy and he didn't actually contribute to the invention. The problem is and I don't know whether it seems evident to anybody else, but it screamed at me as to why there was no attempt by abroad to correct the ownership under under provisional applications. If Professor Murphy was not actually an inventor, then it should have been possible to have done that. But it wasn't it wasn't done anyway. The opponents of course, argued that Paris Convention prevails not US national law. And on the Paris Convention, we have this priority rate right from Professor Mary Feeney, which is somehow floating in the ether, which has not yet been acquired by the PCT applicant. And as a result of that, then the prowers punctuality could not hold. The long and the short of it is that the patentee lost the right to claim priority. And that meant that the first application was related to a later date. And that in turn meant that two documents were that, that were filed after the December filing date became available as prior art. And they were just knockouts for novelty and inventive stuff. happened was revoked. And so obviously, Rod appealed. So to bring this right up to date, then the board of appeal decided in in January of last year, to revoke the patent. And the lack of assignment from Professor Murphy manage that all of the Priority applicants have not assigned their priority right to the PCT applicants. And the decision of the board of appeal was published quite late in 2020. And that allowed a window for abroad to appeal to the large board of appeal on the third level, they didn't file an appeal, the case is closed. And no, nobody has any rights to that technology in Europe. In short term, the failure to identify and Professor Mark Finney as a PCT applicant, or the failure to delete him as an inventor slash applicant on the US provisionals are perfect.

Unknown Speaker  57:10  
And questions to everyone for your attention. And thank you to morrow Akita and, Mike, for all of that insightful information. We do have some time for questions and answers, I did see one chat question come through about the slides, we will be sharing the slides and the recording of the presentation on the autumn Learning Center, which is included with your registration. So you can look out for those there early next week. But please use the q&a feature if you would like to pop in any questions, and I do have a couple to get us kicked off. But again, as we're going through these few questions, please feel free to add your own into the mix. If you haven't typed those there yet. Let's start with should an assignment be obtained from all employees or just those involved with research?

Unknown Speaker  58:01  
So I look, EDA will take that question. So although it is very unlikely that the the employees and staff outside of the research staff would be developing anything that's considered an invention, it's a good idea to obtain that assignment from all employees. Because you never know what may happen. Someone that's an employee not currently working in research could likely you know, end up in a lab one day you never know. Or they could come up with some invention or creation that could be copyrighted or something like that. So it's just best to have the practice in place to obtain that assignment from all employees upon hire.

Unknown Speaker  58:53  
micromarket anything to add to those points?

Unknown Speaker  58:57  
Nope, nothing for me. No, it's it's easier to get the VA to include it as part of the employment contract at the beginning. And then it's something you don't have to come back and revisit. Excellent, thank

Unknown Speaker  59:12  
you. So looks like our next question is around employee inventors versus students or undergraduate students and post grad students treated the same as employee inventors.

Unknown Speaker  59:30  
On this side of the Atlantic, it's going to depend on the circumstances. Certainly an undergrad would not be an employee of the university. And so if an undergraduate student is listed as an inventor, they will have to be treated separately in terms of a specific assignment. If it's a postgraduate student over here in Europe, generally speaking, they while they might be on a research grant That research client will be paid through the university. And so the university would be considered as their employer. So it's kind of depend on the circumstances of the case. But both of those are flags to, certainly for me to check, is this somebody who is an actual employee of the university? Or is this somebody that might have to treat and especially.

Unknown Speaker  1:00:24  
And having been in that situation myself, in the US, again, will depend on the circumstances as an undergraduate research student, you can be included in that grant. So it'll depend on circumstances there. If you're employed by the lab, it may be different than just working on a on another project, outside of the lab, or outside of the confines of a grant, for example. And as Mara mentioned, in a postgraduate setting, you are likely to be considered employee. And I think Nikita mentioned it during our discussions before that. University of Tennessee has a good strategy in terms of when that grant is going to come through that all people included on that grant will need to include that President assignment before those grant funds are distributed like he did. Did you maybe want to elaborate on that? Yes,

Unknown Speaker  1:01:18  
that is correct. So that is a definitely a good point, or a good place to kind of do those checks and balances to make sure that rights that needs to be assigned are signed, if not already. So at the time that a grant proposal is submitted, the grants office would definitely check to see if everyone that's listed on that grant has executed an assignment.

Unknown Speaker  1:01:47  
Excellent. I see a couple of new questions that just came in. For US patents. Do all inventors have to sign on the same assignment form? Does it have to be signed by a notary public? And do you need any witnesses?

Unknown Speaker  1:02:01  
That's a great question. The inventors do not need to sign on the same assignment form. They can be on separate pages. Oftentimes, if the if the assignment itself includes signature lines for each inventor, and maybe there's three or four signature lines on one sheet, those still can come in as separate sheets with each inventor having signed one sheet and we can compile those together. Does it need to be signed by a notary public? No. Is it preferable? Yes. And that has to do with well state by state but the laws of evidence and so if it is notarized that can be that can be self. I can't remember the right word off the top of my head right now. Maybe Nikita can help me authenticating. Thank you very much self authenticating, so then you don't have to worry about it. So preferable? Yes. Necessary? No. And sort of same thing with witnesses. Necessary No. preferable? Yes. As more I mentioned, during our, during the talk, witnesses aren't required AND and OR notary public isn't required in Europe. But as sort of a best practice, they are preferred, at least in the US. Alright, I didn't want to expand on that.

Unknown Speaker  1:03:22  
All I would add is, if it's going to be presented to the EPO, it'll need to be countersigned by the EPO, we'll accept it on multiple pages. Same as what Mike is talking about, we just assemble the whole thing together. So they don't have to be all on the same sheet. In these pandemic times, it's almost impossible to get that

Unknown Speaker  1:03:45  
thank you. And then do we need separate assignments for provisional utility divisional PCT, etc, even if the future assignments are included in the provisional application.

Unknown Speaker  1:03:58  
So, again, not necessary, but definitely preferable. So each time really you get a new application number, it's best to record against that application number in the USPTO a new assignment, those really act is confirmatory assignments, but also put the public on notice of those assignments. And so again, not necessary, but definitely preferable. Makita did you want to add something there?

Unknown Speaker  1:04:25  
Yeah, I was just gonna say that we definitely have that practice in place in my office every time an application is filed. Going forward from the provisional we execute an assignment agreement every time.

Unknown Speaker  1:04:41  
So there even though it has an assignment of the future rights, it's nice to confirm those. So you can always go back and rely on that sort of promise to assign but then again, you have that confirmatory assignment later on that you can record against that. That particular other application number.

Unknown Speaker  1:05:03  
Great. And I think our final question that we'll close out with unless I see any more added into our q&a in just the next minute or so, how does this all apply to an academic on sabbatical at one of our universities, who is collaborating with an employee inventor?

Unknown Speaker  1:05:24  
I can speak to this to some extent, I'd have a better experience, because I do some work with with local universities. And, and this was one that blindsided them. Because the Technology Transfer people were not aware and that there was somebody coming in on sabbatical, and was not aware of what labs they were going to be working in. And there was collaboration going on, until an invention disclosure form came in. And at that stage, it was it's kind of late to be trying to get to the bottom of that. So it's kind of a back in the days when when academics could go on sabbaticals and could travel between one university and another. It's kind of a loose end, and certainly something that I think we should all pay more attention to.

Unknown Speaker  1:06:23  
Excellent. I don't see any other questions coming through for the moment. If any of you have any closing thoughts you want to share? I can toss it back to you otherwise, we can wrap up. Alrighty, well, again, thank you all so much, Mario Keita. And Mike for your informative discussion and attendees. Thank you so much for joining today.

Transcribed by https://otter.ai