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.