A researcher, working at a university, executed an agreement to assign his inventions to the university. Subsequently, he participated in a joint research project between the university and a private company. In conjunction with this joint project, the researcher executed a Confidentiality Agreement, pursuant to which he agreed that he “will assign and does hereby assign” to the private company all inventions resulting from his work on the joint research project.
In due time, the results of the joint project proved valuable. The private company successfully commercialized them. The university, which had secured patents on the inventions, sued the private company for patent infringement. In its defense, the private company asserted that it is the proper owner of the patents. Thus, the issue was which entity owned the patents, the private company or the university – which is party to the earlier agreement? The answer, somewhat surprisingly, is the private company. Stanford v. Roche
The Court noted that, in his agreement with the university, the researcher did “agree to assign” his inventions. This was a promise to assign IN THE FUTURE, whereas the agreement with the private company effected a PRESENT assignment. Therefore, the private company was the proper owner of the patents, even though its agreement with the researcher was executed after the agreement between the researcher and the university.
THE LESSON TO BE LEARNED: Be careful with respect to the time when a promised act is to be performed.