Who Owns The Patent? Your Assignee or Your Assignee and Your Toxic Ex-Spouse?
We hold these truths to be self evident: (i) Patent rights originally vest in the inventor even if the patent was conceived in the course of employment; (ii) Most companies get assignments from their employees as to patent rights; (iii) All property obtained during marriage is presumptively community property in community property states (e.g. California and Texas); (iv) divorces can be nasty.
So, what happens if an inventor works for a company, creates a patentable invention while married, signs the standard assignment of intellectual property and the spouse does not sign the assignment. Is that an effective assignment?
Or, what happens if an inventor develops a patentable invention, gets a divorce in which the ownership of such patent is not mentioned, then assigns the patent, the assignee then brings suit on the patent and the defendant moves to dismiss the complaint because the ex-spouse is a necessary party and was not named in the suit?
Who gives a damn? Well, the U.S. Court of Appeals for the Federal Circuit has to decide this issue in Enovsys LLC v. Nextel et al. In this case Nextel was sued for infringement of some GPS patents that Enovsys obtained from an inventor after his divorce. The inventor and the spouse got a "quickie" divorce in California in which they marked a box on the divorce form that said they did not possess any community property. The Court of Appeals thought that this was enough to vest all ownership in Enovsys and preserve their standing to sue.
Although the Court skirted the issue (no sexism implied) in this case, the issue remains as to the status of patents obtained during marriage and the proper way to assign them. California and Texas are community property states and both states recognize that property obtained during a marriage is presumptively community property. The Court of Appeals in Enovsys confirmed that federal patent law does not preempt state law in regard to property ownership. The Texas Court of Appeals has said (in dicta) that "It is unquestionable that, had these patents been taken out during the marriage, the patents and the income they generated would be community property. In this, we would join other jurisdictions in which the courts treat the income from intellectual property created during marriage as marital or community property." Alzenz v. Alsenz 101 S.W.3d 648 (2003)
Then, is it possible that a spouse or ex-spouse in a community property state has an interest in your patent portfolio? Must you get the spouse to sign the assignment of intellectual property rights that resides in your standard forms that companies get all employees to sign? Must you update that if an unmarried inventor gets married? Seems like a lot of trouble, doesn't it? Good practice may indicate that you do so, but the dearth of cases that revolve on this issue would seem to indicate that maybe the chances are so slim that it's not worth the trouble.
What do you think?
