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Gavel to Gavel: IP agreement is key to invention ownership

Gavel to Gavel appears in The Journal Record. This column was originally published in The Journal Record on Jan. 24, 2019.


Cody Cooper

Cody Cooper is a Patent Attorney in the Intellectual Property Practice Group and represents individuals and companies in a wide range of intellectual property, patent, trademark and copyright matters. His practice also includes commercial litigation.

By Phillips Murrah Attorney Cody J. Cooper

Let’s say an employee invents something during the course of his or her employment. Who owns the invention? There is a common misconception that the employer always owns the rights to the invention. However, that is incorrect. The correct answer is that typically the employee owns it.

Inventors’ exclusive right to their inventions is specifically written into the U.S. Constitution and, as such, courts have generally interpreted ownership of inventions to favor the inventors. While there are some narrow exceptions, the general rule is that an inventor owns the rights regardless of how that invention arose.

If an employer wants ownership of inventions created by employees, the employer must have employees sign an intellectual property assignment agreement. In such a scenario, employers should be aware that courts strictly interpret IP assignment agreements. Recent case law has instructed employers that how you draft the assignment agreement is equally as important as having an agreement in the first place.

For example, the Federal Circuit recently determined, in Advance Video Technologies v. HTC Corporation Inc., that the language “will assign” in an IP assignment is insufficient to actually assign an employee’s interest in an invention to the employer. The court opined that “will assign” is simply a promise to do something in the future.

Instead, the court inferred that an IP assignment must include language saying the employee “assigns” – present tense – their IP rights. The small difference in language had a tremendous impact on the employer’s standing to sue another company for patent infringement.

If employees have already created inventions that the employer presumed the company owns but doesn’t have an IP assignment in place, the invention is likely owned by the employee and the employer probably has no rights to the invention. Nevertheless, the employer and employee can still enter into an IP assignment agreement.

However, in this scenario there must be an exchange-of-value, i.e. consideration. The law makes clear that it is not enough for the employer to say that the consideration passed to the employee is the employee’s continued employment. There must be something more passing to the employees for their assignment of their invention, like money, stock or some other exchange of value, for it to be effective.

Monkey’s business?

Gavel to Gavel appears in The Journal Record. This column was originally published in The Journal Record on June 21, 2018.


Cody Cooper

Cody Cooper is a Patent Attorney in the Intellectual Property Practice Group and represents individuals and companies in a wide range of intellectual property, patent, trademark and copyright matters. His practice also includes commercial litigation.

By Phillips Murrah Attorney Cody J. Cooper

In 2011, a nature photographer in an Indonesian nature reserve left his camera unattended in the forest. A 7-year-old crested macaque monkey named Naruto, perhaps in an effort to increase its Instagram followers, decided to take several selfies using the camera. The photographer then, in 2014, published the monkey’s photographs in a book for sale online.

People for the Ethical Treatment of Animals sued as next friend of Naruto seeking to enforce Naruto’s copyrights to the photographs and to recover profits from the sale of the book.

The question became whether Naruto had statutory standing to claim copyright infringement on what became referred to as Monkey Selfies. According to the 9th Circuit Court of Appeals, the answer is no.

Humans, unlike monkeys, have a constitutional right to protect their works and inventions under Clause 8 of Section 8 contained within Article I of the Constitution, and those rights are further set out in the United States Copyright Act. These rights include the right to use, distribute, sell, duplicate, display and create derivative works. These rights are most commonly associated with books, magazines, plays, paintings and photographs, but can also apply to things like architecture and even graffiti.

The 9th Circuit, in Naruto, et al., v. Slater, et al., No. 16-15469 (9th Cir. April 23, 2018) affirmed the trial court’s ruling that, despite the fact that the monkey had standing under Article III of the U.S. Constitution, Naruto did not have standing under the Copyright Act to bring the lawsuit. In other words, monkeys (or any other animal) cannot bring copyright infringement claims because the Copyright Act does not expressly authorize it. So, Naruto’s case was dismissed.

Citing Cetacean Cmty. v. Bush, 386 F.3d 1169, 1175 (9th Cir. 2004) as precedent, the 9th Circuit Court of Appeals held that “if an Act of Congress plainly states that animals have statutory standing, then animals have statutory standing. If the statute does not so plainly state, then animals do not have statutory standing.”

If Naruto teaches nothing else, it should be to remember that if you see your pet attempting to take a selfie with an abandoned camera, be sure to take the picture yourself, in case it becomes famous. Someone will be making money on it, and it might as well be you.

Cody J. Cooper is a patent attorney with the Oklahoma City law firm of Phillips Murrah.

Phillips Murrah Attorney Cody Cooper earns patent license

Cody Cooper is an associate in the Intellectual Property Practice Group and represents individuals and companies in a wide range of intellectual property, patent, trademark and copyright matters. His practice also includes commercial litigation.

Merging work life with personal interests is a tough feat to accomplish, but in 2015, Phillips Murrah Attorney Cody J. Cooper set in motion a two-year journey to make that a reality.

“I’ve always enjoyed science and looking at things to figure out how they work, and Intellectual Property is a great fit for that interest,” Cody said. “I like the idea of working hand-in-hand with inventors to help them along with the process, with the end goal of getting them a patent on their unique idea.

Intellectual Property is a perfect blend of law, science and entrepreneurship that perfectly aligns with my personal interests and passions.”

With this motivation in mind, Cody began the process of obtaining a license to become an official Patent Attorney.

“Everyone on the planet has had an idea at some point in their lives,” said Martin G. Ozinga, Of Counsel Attorney and Chair of the Firm’s Intellectual Property Practice Group. “There aren’t many practicing Patent Attorneys in Oklahoma, but there are plenty of folks who need one.”

Aside from personal gain, the designation of a Patent Attorney offers credibility and security for clients which isn’t afforded to those seeking patents on their own accord. However, the process for obtaining a patent license can be demanding, especially with a full-time legal workload.

In order to sit for the Patent Bar, candidates must have a scientific or technological background, typically in the form of an undergraduate degree in a science or engineering field, in addition to securing a law degree.

“I had accumulated undergraduate credits in chemical engineering, but I was short by 13 hours,” Cody said. “When I knew I wanted to pursue getting my patent license, I looked at the University of Central Oklahoma’s enrollment requirements and their course catalog to find classes that I could attend in the evenings after work.”

Because it had been several years since he took engineering courses in college, Cody tried to find a line of classes that qualified but from which he could start at the beginning. The best courses that worked for this were biology courses, he said.

Over the course of three semesters, Cody took four evening biology classes at UCO: biology, biology lab, microbiology and human anatomy with cadavers.

“During school, I had class two to three nights per week, and classes lasted two to three hours each night,” he said. “I also had homework, quizzes, tests and finals as part of these courses.”

Much like the standard college experience, he was in class with undergraduate students and had homework, regular tests and finals.

“When I was completing my third semester, I went to San Francisco and took a Patent Bar study course. The course was essentially a full-week course put on by the Practising Law Institute,” Cody said. “After I finished my last semester, I applied to the United States Patent and Trademark Office to take the Patent Bar and proceeded to take the exam.”

Cody spent a several hours most nights and weekends studying for the two months leading up to taking the Patent Bar. He passed on his first attempt, and as of July 2017 has officially obtained his Patent License and the ability to practice as a Patent Attorney.

Learn more about Phillips Murrah’s Patent, Copyright and Trademark Practice Group by visiting the Intellectual Property Practice Area page here.