Last week there was plenty of discussion on the blogosphere about the U.S. Supreme Court’s decision in Stanford University v. Roche Molecular Systems, Inc. I’ll let you read others for the gory details (among many others, go here for Bill Carleton’s take and go here for IP Draughts’ take). All that interests me is the assignment language used in the two contracts at issue.
Here’s the language from the Stanford contract:
I agree to assign or confirm in writing
The Court of Appeals for the Federal Circuit held that this constitutes a promise to assign rights in the future, and the Supreme Court apparently agreed. That makes sense, but as I mentioned in this October 2007 post on AdamsDrafting about a previous Federal Circuit case, any drafter who uses agrees to assign might think that they’re articulating not language of obligation but instead language of performance effecting an assignment.
In addition to creating that potential for confusion, agrees to is clumsy, given that the lead-in to the body of the contract says that the parties agree to what follows. If you use agrees to in the body of the contract, you’re in effect saying that the party in question agrees that it agrees to.
So if you’re still using agrees to, you might want to drop it from your drafting repertoire.
And here’s the language from the Cetus contract:
I will assign and do hereby assign
The Federal Circuit held that this language constitutes a present assignment, but I think the court was being a bit generous. This language reminds me of be and hereby is, which in this January 2007 post on AdamsDrafting I suggested was “the lamest drafting usage.” Like be and hereby is, the language in the Cetus contract inexplicably articulates two categories of contract language simultaneously, the first being perhaps language of obligation, the second being language of performance. Only one can work; the Federal Circuit opted to focus on the latter.
And as regards do hereby assign, using do as an auxiliary in language of performance is an archaism; see MSCD § 2.20.
I agree that “will” and “do hereby” are different concepts, but isn’t it more a question of the “will” being redundant? The “will” creates an obligation and the “do hereby” simultaneously satisfies that obligation. While there is no reason to create the obligation, it would seem much weirder to decide that the “will” renders the “do hereby” entirely meaningless and ineffectual.
So, given the drafting, I think the court’s decision was fairly obvious. The dissenting judgement on this point seemed much too purposive, to the point of ignoring the language used.
Anyway, it is another illustration that to be concise is to be clear: “I hereby assign…” seems the best option. (I can’t quite trust “I assign…”.)
W: Language of performance states that which happens automatically when the contract is signed. Language of obligation states a duty that runs from when the contract is signed. The two are apples and oranges, oil and water. Ken
Fine for the U.S., but other countries might have different laws.
Another way: “I hereby assign all my inventions [etc] …. To the extent that a present assignment of a future invention is not effective in a relevant jurisdiction, I agree to assign such invention ….”
(I know you don’t like “hereby,” but it’s cheap clarity insurance.)
D.C.: The concept sounds fine. But I don’t know where you got the idea that I don’t like hereby; see MSCD 2.13. And for the reasons explained in the post, I wouldn’t use I agree. I’m also not crazy about using the first person; see MSCD § 2.5. Ken