But I do give him significant credit in recognizing that Bayh-Dole does evidence a “scheme,” or as he calls it, “a hierarchy,” for how ownership of invention/patent rights is (or should be) allocated for federally funded research: (1) first, to the funded organization; (2) next, to the federal government; and (3) last, to the employee/researcher.
In other word, Bayh-Dole provides a “pecking order” for who gets the first claim to ownership of those rights, similar to a “right of first refusal” in a license agreement.
A transfer of patent or patent application can be the result of a financial transaction, such as an assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in an inheritance process, or in a bankruptcy.
The rationale behind the transferability of patents and patent applications is that it enables inventors to sell their rights and to let other people manage these intellectual property assets both on the valuation and enforcement fronts.
case that is glossed over (or at least not addressed directly) by the Supreme Court majority (as well as others in the patent “blogosphere”) is what happens when you have a present assignment (or at least a contractual obligation to assign) of invention rights that don’t exist at the time of the assignment (aka “future invention rights”).
Should (as the Federal Circuit held) Roche (or more appropriately its predecessor, Cetus) by using the language “I will assign and do hereby assign” (aka the “Cetus Assignment Clause”) trump what may have been an earlier obligation by a Stanford University researcher (Mark Holodniy) to assign invention rights to Stanford University (aka the “Stanford University Assignment Obligation”)?
Assignment of an interest occurs only by an "instrument in writing".
The statute also permits recording an assignment with the United States Patent and Trademark Office, but recording is not required except to protect against "any subsequent purchaser or mortgagee for a valuable consideration, without notice...." A security agreement is a conditional transfer of patent ownership when patents are used as collateral for a loan.
The borrower will agree to transfer ownership of the patents to the lender if the borrow defaults on the loan.
Security agreements on patents in the US are registered with the United States Patent and Trademark Office.