Cantor Colburn Client Alert: The Essentiality of Legal Title Assignment
You May Not Own What You Think You Own
In August 2021, the United States Federal Circuit Court of Appeals held in Omni Medsci vs. Apple Inc. that a university IP policy and employment agreement providing that patents developed by an employee “shall be the property of” the university does not present an automatic assignment of future patent rights, and therefore is not sufficient to effectuate the assignment of legal title to the university. Omni Medsci is an important reminder is an important reminder that improper assignment language will leave a purported assignee with no ownership rights and therefore correct assignment language is of extreme importance.
In this Cantor Colburn Client Alert, we review the details of Omni Medsci and discuss the essentiality of assignment language. Improper assignment language can cause major implications for companies not only in litigation but also in, for example, mergers and acquisitions where it is discovered in due diligence that a target entity does not own what may be its most valuable asset – its intellectual property. To avoid this pitfall, always incorporate in assignment clauses present-tense active verbs such as “hereby assigns” to effectuate a present automatic assignment of a future inventions.