PATENT LAW – CONTRACT LAW
Assignment of title
• Stanford did not gain title to Holodniy’s inventions, while the VCA effected a present assignment of Holodniy’s future inventions to Cetus
Paragraph 2 of the CPA then recites: “I agree to assign or confirm in writing to Stanford and/or Sponsors that right, title and interest in . . . such inventions as required by Contracts or Grants.” Id. (emphasis added). We have held that the contract language “agree to assign” reflects a mere promise to assign rights in the future, not an immediate transfer of expectant interests.
Stanford did not immediately gain title to Holodniy’s inventions as a result of the CPA, nor at the time the inventions were created.
Next, when initiating his visits to Cetus, Holodniy signed the VCA on February 14, 1989. Paragraph 3 of the VCA recites: “I will assign and do hereby assign to CETUS, my right, title, and interest in each of the ideas, inventions and improvements.” J.A. 1658 (emphasis added). In contrast to the CPA, the VCA’s language of “do hereby assign” effected a present assignment of Holodniy’s future inventions to Cetus.
Roche’s counterclaim for ownership is time-barred by statutes of limitation