Wednesday, June 15, 2011

Should Spouse Sign Invention Assignment?

Dear Rich: I am working with a co-inventor and we're getting ready to assign our patent rights to a company that we created (incorporated in California). The co-inventor is married and so am I. Do we need to have our spouses to sign the assignment as well? Congratulations on doing the right thing -- that is creating an entity and transferring your patent rights to it. Many people proceed informally and fail to properly assign their rights. Don't forget to record your assignments with the USPTO.
Right you had a question. Legal title to an invention is a matter of state law, not federal law. In California, if you filed your patent at the time you were married, a court will presume that your spouse shares an undivided half of your interest (that is, your spouse is co-owner of legal title to the patent). That rule was confirmed in a recent case. To avoid confusion and to be assured that your assign­ment is complete (and your spouse will not later dispute the assignment), you should include a provision in your assignment similar to the one below. This provision protects the assignee (person acquiring the rights to the invention) from later being sued by the spouse of the inventor.  When used in assignments, it usually appears below the signature line for the inventor. (BTW, this provision is not required in license agreements.)
Sample Provision for Spousal Assignment
I am the spouse of Assignor and I acknowledge that I have read and understand this Assignment agreement. I am aware that my spouse agrees to assign his/her interest in the Invention, including any community property interest or other equitable property interest that I may have in it. I consent to the assignment and agree that my interest, if any, in the Invention is subject to the provisions of this Agreement. I will take no action to hinder the Agreement or the underlying assignment of rights.
Spouse’s signature