Recently we discussed a rather controversial suggestion about keeping the ownership of patents with the inventors, instead of forcing inventors to assign patents to their employers. One of the major objections to this idea is that it appears to stand outside the current thinking on patent law in the US. But a recent decision for a summary judgment in the US District Court Northern California District both suggests that the law doesn't accept employers' unhindered right to employees' patents, and illustrates just how complex patent law can be in the US, where state codes and federal law can almost overlap.

In this ruling (a copy of which is purportedly here, but I can't identify the provenance of this site) Judge James Ware granted a summary judgment to defendants who were being sued by Applied Materials. The defendants, according to this document, were employees of Applied, and signed various versions of an employment agreement that said, to quote one version:

"In case any invention is described in a patent application or is disclosed to third parties by me within one (1) year after terminating my employment with APPLIED, it is to be presumed that the invention was conceived or made during the period of my employment for APPLIED, and the invention will be assigned to APPLIED as provided by this Agreement, provided it relates to my work with APPLIED or any of its subsidiaries."

The defendants left Applied and went to work for another company, Advanced Micro-Fabrication Equipment. There, according to Applied, the defendants described or disclosed inventions within one year of their departure. Applied wished to claim the right to patents from these inventions. The defendants countersued, asking for a summary judgment that under California law, the clause in their employment contracts was anticompetitive, restricted their ability to pursue their careers, and was therefore void. The court this week granted their request for summary judgment, according to this document—in effect, saying that Applied had no legal claim on the inventions because the clause in their employment contract was in fact void.

However—the decision does illustrate that the ability of employers to demand assignment is not unlimited. It is limited if it interferes with other laws, as in this case. And by inference, it is limited in time. A company cannot simply reach out of the past and demand rights to the work of a former employee. Both of these are important points, and are perhaps an indication that current attitudes toward patent assignment clauses can change.