• Were the Patent Rights Assigned?

    by  • May 4, 2018 • patent • 2 Comments

    Defendant J2 Cloud Services (JFAX) hired plaintiff Greg James to write some software. Unbeknownst to James, JFAX filed a patent on the software. Many years later, James sued JFAX for correction of inventorship. JFAX argued that James didn’t have standing for correction of inventorship because he had assigned his patent rights to JFAX. The district court agreed with JFAX and dismissed the suit. James appealed.

    Here are the relevant portions of a letter agreement between James and JFAX:

    This letter shall serve to confirm our Agreement on the terms by which you … will develop software solutions for the exclusive use of JFAX Communications, Inc. ….

    You agree to develop original software solutions, write original software routines, carry out testing and otherwise provide technological solutions for the JFAX system, and be responsible for the creation, execution and delivery to JFAX of a series of aspects of those solutions.

    JFAX shall become the sole owner of all code and compiled software solutions as described in this Agreement as soon as it is developed, and GSP shall assign to JFAX all copyright interests in such code and compiled software.

    James also executed copyright assignment agreements for the software.

    Did he assign the patent rights? Add your thoughts in the comments.

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