Rights start with the inventor and move only in writing
Get present-tense written assignments from everyone before they contribute, because one unsigned co-inventor can block enforcement.
Lesson 6 of 8 · 3 min
The inventor owns first
Many founders assume a company owns what its people invent. The starting rule is the reverse: "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor," and mere employment does not vest title, meaning legal ownership (Stanford v. Roche). Without a contract hiring someone to invent, an employer may have only a shop right, a limited right to use the invention (Dubilier).
Contractors are a sharper trap. WIPO, the UN's intellectual property agency, warns that a company without a written assignment from a contractor owns nothing, "even if it paid for its development." WIPO gives that as a general position that varies by country (Inventing the Future).
The verb decides
An assignment is a transfer of ownership, and small wording changes matter. In Stanford v. Roche, "agree to assign" lost to "will assign and do hereby assign" (syllabus), following FilmTec. The first phrase promises a later transfer. The second makes one now.
Treat this as Federal Circuit law, from the appeals court that hears patent cases. The Supreme Court had "no occasion to pass on" FilmTec, and Justices Sotomayor and Breyer voiced concerns (concurrence; dissent).
Write it down and record it
Applications and patents are assignable "by an instrument in writing." An unrecorded assignment is void against a later purchaser or mortgagee for value without notice, unless it is recorded within three months or before that purchase (35 U.S.C. § 261).
Co-owners can undercut each other
Absent agreement, each co-owner may exploit the patent "without the consent of and without accounting to the other owners" (35 U.S.C. § 262). Each co-inventor presumptively owns an undivided interest in the entire patent, may license without consent, and must ordinarily join any suit (Ethicon). So one unsigned co-inventor can license a competitor, or decline to join your lawsuit.
Federal funding and state law
The Bayh-Dole Act lets nonprofit and small-business contractors elect to retain title to federally funded inventions (35 U.S.C. § 202), but it does not vest title automatically (Stanford v. Roche).
We have not verified state employee-invention statutes, so ask a patent attorney before relying on an employment agreement.
Timeless wisdom
Ownership begins with a person and moves only by a deliberate written act. Employment alone does not move it (Stanford v. Roche), and payment alone may not either (WIPO). The law also treats co-owners as near-independent actors, each free to use the patent without the others (35 U.S.C. § 262). In our judgment, the durable habit follows: settle ownership in writing before anyone contributes, when everyone still agrees, and not after the invention has become valuable.
What's current
As of November 6, 2026
Causam v. ITC (October 15, 2025, precedential) held that an assignment of "all divisions, reissues, continuations and extensions" did not reach a continuation-in-part (CIP), a later application that adds new material. Add CIPs to assignment templates.
The March 2026 Applications in Internet Time v. Salesforce decision on standing illustrates the point, but it is nonprecedential.
Howard Lutnick's proposal for a government share of university licensing revenue is unresolved. Our research found no 2026 rule or completed deal (Axios; AIP FYI).
Key takeaways
- Rights start with the inventor, and employment alone does not transfer them.
- Use present-tense wording such as "hereby assign," not a promise to assign later.
- Record assignments promptly to protect against a later purchaser.
- An unsigned co-inventor can license others and can block a lawsuit by not joining.
Check your understanding
Sources
- Stanford v. Roche (opinion)
- United States v. Dubilier Condenser
- WIPO, Inventing the Future
- Stanford v. Roche (syllabus)
- FilmTec v. Allied-Signal
- Stanford v. Roche (Sotomayor concurrence)
- Stanford v. Roche (Breyer dissent)
- 35 U.S.C. § 261
- 35 U.S.C. § 262
- Ethicon v. U.S. Surgical
- 35 U.S.C. § 202
- Causam v. ITC (Fed. Cir.)
- Applications in Internet Time v. Salesforce (Fed. Cir., nonprecedential)
- Axios, Lutnick on university patents
- AIP FYI, Commerce and research patents
The Academy is general education, not legal advice, and reading it doesn't create an attorney-client relationship. Patent law and fees change, so check the linked sources and have a registered patent attorney or agent review your situation before you file. Obsidyan sells patent software, including AI drafting tools, so weigh what these lessons say about AI tools with that in mind.