Inventors' Assignment of All "Inventions and Discoveries" in a Patent Application Resulted in Assignment of Unrelated Patents


In most assignment agreements, parties will seek to explicitly set forth the particular patents or applications being sold. It is not uncommon, however, for parties to want to extend such assignments to encompass rights beyond what is listed in the agreement. For example, parties may want to include future continuation applications or other patents in the same family as the identified patents or applications. In some instances, parties will draft the assignment agreement to include not just rights in an application itself, but also rights in any "inventions" or "discoveries" in those applications. Parties may not always appreciate, however, how the use of such terms can extend the rights being assigned. In the recent case, MHL Tek, LLC v. Nissan Motor Co.,1 Nos. 10-1287, -1317, - 1318 (Fed. Cir. Aug. 10, 2011), the Federal Circuit held that an assignment of "inventions and discoveries" in a patent application assigned rights not only to the patent application but also to an unrelated patent applications whose claims were supported in the disclosure of the subject application.

Two individual inventors developed a tire pressure monitoring system ("TPMS") that monitors tire pressures and transmits that information to the operator of a vehicle. The inventors ultimately received three patents directed to TPMS. Two of the three patents ("the Common-Parent Patents") shared an identical specification and claimed priority to a single parent application (the "Parent Application"). The third patent (the "Unique-Specification Patent") was directed to a similar system but had a different specification than the common-parent patents and did not claim priority to the parent application.

Please see full article below for more information.

LOADING PDF: If there are any problems, click here to download the file.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Finnegan | Attorney Advertising

Written by:


Finnegan on:

JD Supra Readers' Choice 2016 Awards
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.