[i] For a discussion of contracts assigning intellectual property rights for independent developers, see Thomas H. Buscaglia, “The Game Attorney,” IGDPA IP White Paper: IP Contracts that Independent Developers Sign, The Game Attorney, http://www.gameattorney.com/gamearticle7.htm (last visited Jun. 29, 2013). The Institute of Electrical and Electronics Engineers also created a guide to familiarize employee engineers with intellectual property and pre-invention assignment agreements. Orin E. Laney, Intellectual Property and the Employee Engineer, IEEE-USA Professional Guideline Series (2001), available at http://www.ieeeusa.org/members/IPandtheengineer.pdf.
[ii] See Ann Bartow, Inventors of the World, Unite! A Call for Collective Action by Employee-Inventors, 37 Santa Clara L. Rev. 673, 683–84 (1997) (“Almost every technologist . . . of an American company involved in any sort of research is compelled to sign a pre-invention assignment agreement as a condition of employment.”), available at http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1473&context=lawreview; see also Marc B. Hershovitz, Unhitching the Trailer Clause: The Rights of Inventive Employees and Their Employers, 3 J. Intell. Prop. L. 187, 197 (1995) (“[E]mployers frequently require employees to sign ‘intellectual property agreements as a condition of employment.”).
[iii] Karl Barnfather, a patent attorney at Withers & Rogers, stated “[i]n my experience, inventors are not really interested in owning patent rights as such. They are much more interested in the kudos of being named inventor and in being rewarded for their endeavor . . . .” Twitter’s Move to Gift Patent Rights to Inventors Could Prove Limiting Commercially, Withers & Rogers, IP News in General (April 20, 2012), http://www.withersrogers.com/news/251/112.
[iv] Questions about software patentability were raised as early as the 1960s. S. Comm. on the Judiciary, Subcomm. on Patents, Trademarks, and Copyrights, Rep. of the President’s Commission on the Patent System, S. Doc. No. 5, 90th Cong., 1st Sess. at 13 (1967), available at http://digitalcommons.law.scu.edu/historical/9/. The Federal Circuit first held in In re Alappat that an algorithm implemented in a general-purpose computer is patentable. 33 F.3d 1526 (Fed. Cir. 1994), available at http://www.utexas.edu/law/journals/tlr/sources/Issue%2089.5/Golden/fn161.InReAlappat.pdf. This led to a flood of software patents, with the number granted per year increasing dramatically, with around 40,000 granted in 2009. James Bessen, A Generation of Software Patents, Boston University School of Law Working Paper No. 11-31, 26 Fig. 1 (June 21, 2011), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1868979. In CLS Bank v. Alice, a divided Federal Circuit voted to strike patent claims to a “computer system” hinging on whether an abstract idea can be patented by claiming a computer system that implements it. CLS Services Ltd. v. Alice Corp. Pty. Ltd., No. 11-1301 (Fed. Cir. May 10, 2013), available at http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1301.Opinion.5-8-2013.1.PDF; see also Dennis Crouch, CLS Bank v. Alice Corp: Court Finds Many Software Patent Ineligible, PatentlyO (May 10, 2013), http://www.patentlyo.com/patent/2013/05/cls-bank-v-alice-corp-court-finds-many-software-patents-ineligible.html.
[v] Lawsuits by patent trolls comprise the majority of new patent cases and demand letters in 2012 exceeded 100,000, with targets ranging from Fortune 500 companies to corner coffee shops and regular consumers. Gene Sperling, Taking on Patent Trolls to Protect American Innovation, The White House Blog (June 4, 2013 1:55 PM EDT), http://www.whitehouse.gov/blog/2013/06/04/taking-patent-trolls-protect-american-innovation; see also Colleen V. Chien, Patent Assertion Entities, Presentation to the Dec. 10, 2012 DOJ/FTC Hearing on PAEs, 33 (December 10, 2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2187314.
[vi] President Obama has spoken about patent reform, the White House released a study on the issue, and in January 2013 the USPTO published a Federal Register Notice of roundtable events and request for comments on software patent quality. In February 2013, Representative Peter DeFazio sponsored the SHIELD Act to the House of Representatives. The bill is similar to the EFF’s fee shifting proposal, and would deter patent trolls by requiring them to pay legal fees if their patent is invalid or if there is no infringement. Senator Schumer also introduced the Patent Quality Improvement Act, which would amend the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011).
[vii] See Sicom Systems, Ltd. v. Agilent Technologies, Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) (“A nonexclusive license confers no constitutional standing on the licensee to bring suit or even to join a suit with the patentee because a nonexclusive licensee suffers no legal injury from infringement.”).
[viii] Sky Technologies LLC v. SAP AG, 576 F.3d 1374, 1379 (Fed. Cir. 2009).
[ix] The assignment would have to meet the requirements of the Manual of Patent Examination and Procedure (“MPEP”) § 301 by transferring the entire “bundle of rights that is associated with the ownership interest.” See Minco, Inc. v. Combustion Engineering, Inc., 95 F.3d 1109, 1117 (Fed. Cir. 1996) (citing Waterman v. Mackenzie, 138 U.S. 252, 255 (1891)). Since the IPA restricts patent enforcement, future assignments may be valid as conveying “substantial rights.” Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 874–75 (Fed. Cir. 1991).