If you are a company that files patent applications, you need to make sure you actually own the patents that come out of them. That might sound obvious, but the wrong word in an employment agreement can mean you never owned the invention at all.
The fix is straightforward: use present-tense assignment language—”hereby assigns”—in a written agreement with every inventor. Here’s why that matters.
Patent Law Defaults Ownership to the Inventor
Copyright law has a “work made for hire” doctrine. If an employee creates a copyrightable work within the scope of employment, the employer is the author. Patent law does not work this way. In patent law, the inventor owns the invention—not the employer, not the company that funded the research, and not the person who assigned the project.
There is an exception. Courts have recognized a “hired to invent” doctrine. Under this doctrine, an employer can claim ownership if the employee was hired for the express purpose of producing the invention. But relying on this argument is expensive, fact-intensive, and not where you want to be in the middle of infringement litigation.
One Word Can Make or Break Ownership
The solution is a written invention assignment agreement. But not just any language will work.
In Advanced Video Technologies LLC v. HTC Corp. (2018), the Federal Circuit held that a co-inventor never transferred her rights to her employer because her employment agreement said “will assign” instead of “hereby assigns.” That one-word difference meant the company only had a promise of future rights—not actual ownership. Without complete ownership, the company lacked standing, and the case was dismissed.
This is not an isolated result. Federal courts have repeatedly drawn this line:
- “Hereby assigns” = a present transfer of rights. The employer owns the invention now.
- “Will assign” or “agrees to assign” = a promise to transfer rights later. The inventor still holds legal title until a separate, formal assignment is executed.
If the inventor assigns the patent to someone else using present-tense language before the employer gets around to a formal assignment, that third party owns the patent.
It Also Makes Life Easier at the Patent Office
A proper assignment agreement does more than protect you in litigation. It simplifies the patent application process.
Under 35 U.S.C. § 118, a person or company that has been assigned an invention may file the patent application as the applicant. This is proven to the Patent Office with the assignment agreement. With that document in hand, the employer—not the inventor—controls the filing, prosecution, and enforcement of the patent.
This matters most when an inventor becomes unavailable or uncooperative. A present-tense assignment means you do not need the inventor’s participation to move forward.
One practical tip: consider keeping the invention assignment agreement separate from the broader employment agreement. When assignments are recorded at the Patent Office, they become public documents.
What Employers Should Do
Three steps to make sure you own your patents:
- Use a written invention assignment agreement. Whether it is part of an employment agreement or a standalone document, get it in writing with every inventor.
- Use present-tense language. The agreement should say “hereby assigns,” not “will assign” or “agrees to assign.”
- Do not rely on implied ownership. The “hired to invent” doctrine exists, but proving it is a headache you do not need.
Conclusion
Patent ownership starts with the inventor, not the employer. A written assignment agreement with present-tense language is the clearest and most reliable way to transfer that ownership. Getting it right from the start avoids costly disputes later.
Justin Miller is a solo patent attorney, and the only IP Certified attorney in Saint Petersburg, Florida. In 2025 he started his own law firm, Distinct Patent Law, after nearly 15 years of practice. Justin serves clients in Tampa Bay, and because patent law is federal, can file patent applications for clients all over the United States.