Magic Words – Or Lack Thereof

Submitted by patentadmin on Wed, 10/14/2009 - 22:32

Does a patent assignment which conveys “all rights, title and the inventions covered hereby and any division, reissues, continuations and extensions thereof” also cover continuation-in-part (“C.I.P.”) applications and any patents issuing thereon? The answer is: the Court doesn’t really know. Gerber Scientific Int’l. v. Satisloh AG

The Court held “...there is no binding precedent holding that an assignment with the exact terms cited above includes CIPs.” The Court cited Rowe, a precedential case in which an assignment, which lacked the “magic words” (“continuation-in-part”), was held to convey rights to a C.I.P.

The Rowe assignment did, however, specifically include “improvements.” No such language was present in the assignment before the Gerber court. In the end, the Court decided that the assignment did not cover a C.I.P., and – passing the buck – certified the question for a prompt appeal and stayed the case pending the decision of the appellate court (the C.A.F.C.).

THE LESSON TO BE LEARNED: Include “continuations-in-part” language in assignments.

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