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 the Article 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."