Do your employees create new inventions, products or designs? Have all of your employees assigned all company inventions to the company? If not, then the company does not own the invention, even if the invention was created on company time and with company resources and in the course of the employee’s work for the company.
That’s the takeaway from Peregrine Semiconductor v RF Micro Devices (S.D. Cal. 2014).
Peregrine developed new products and obtained patents for those products. Peregrine sued RF Micro Devices for infringement of the patents. During the course of the litigation, the parties learned that a former Peregrine employee should have been named as an inventor on the patents, but was not. Peregrine usually obtained assignments of patent rights from all employees, but could find no such assignment from the former employee and the former employee had no recollection of signing such an assignment to Peregrine. Instead, the former employee subsequently assigned his patent rights to RF Micro Devices, the accused infringer.
Peregrine now finds itself in the embarrassing position of co-owning the invention with RF Micro Devices,.
The case includes a discussion of the ‘hired to invent’ doctrine, in which a person is employed to solve a particular problem. Under Federal common law; that is, law made by judges in their decisions, an invention created by a person hired to solve a particular problem is owned by the employer even if the inventor did not sign an assignment. In the Peregrine situation, the former employee had performed several different functions for the company during the course of his employment and was not hired to solve a particular problem. He was not ‘hired to invent’ and Peregrine did not own his rights to the invention.
The result was that a preliminary injunction against RF Micro Devices was denied.
The bottom line? Make absolutely sure that every employee has signed an agreement assigning patent rights to all company inventions to the company. The agreement can be in the employment agreement and can apply to inventions that the employee has not yet created.
— Robert Yarbrough, Esq.