Mere Agreement to Assign Does not Automatically Work an Assignment

IPVENTURE, Inc., v. Prostar Computer, Inc., [2006-1012, 1081] (September 28, 2007)[NEWMAN, Lourie, Bryson] The Federal Circuit reversed the district court's dismissal of a patent infringement action on the grounds that the plaintiff did not own the entire interest in the patent in suit.
SIGNIFICANCE: Mere agreement to assign does not automatically create an ownership interest, divesting the inventor of legal title.
BRIEF: Plaintiff sued for infringement of a patent invented by C. Douglass Thomas, and employee of Hewlett-Packard, and his father, Alan E. Thomas. The district court dismissed the complaint on the theory that Hewlett-Packard had an ownership interest in the patent.
The Federal Circuit found the dismissal was in error, for Hewlett-Packard had no assignment of an interest in the patent, and had disclaimed any interest therein. The Federal Circuit found a difference between a present assignment and an agreement to assign, and held that Hewlett-Packard did not acquire an ownership interest in the patent. Further, the Federal Circuit noted that Hewlett-Packard provided a statement that it never had an interest in the '235 patent, confirmed the situation as to that patent and removed the need to construe the employment agreement.