Psst! Wanna Buy a Bridge? IP Transfers of Non-Existent Property

Abstract

It is common practice when hiring a researcher at a university or a laboratory to require the new employee to sign a patent transfer agreement - essentially to agree to give to the employer any inventions that the employee may conceive of during his employment. However, the nature of that pre-invention agreement - which until 1991 was universally thought of as imposing an equitable duty but not as an actual transfer of legal title to an imaginary asset - has been changed by the Federal Circuit and the U.S. Supreme Court.

This Article reviews more than 170 years of legal history dealing with transfers of non-existent assets, and argues that the concept of an "automatic" assignment in patent law rests on shaky ground. Instead, our system of IP law is much better served by a return to common law principles-both "first in time, first in right" and "you may not give what you do not own."

Keywords: non-existent property, property, IP transfer, IP, patent transfer, pre-invention agreement, non-existent assets, patent law

JEL Classification: K19