[Commons-law] More stuff on employee rights and software

[Lawrence Liang]

Hi

just to add some stuff on Zamrooda's posting on employee rights and whether 
they can be considered a part of the moral rights of authors. I am sending 
a detailed article which addresses various issues arising out of employees 
rights in the context of pre invention agreements.

While it would be desirable to have employees credited as authors of the 
software that they help program, the current legal position in India does 
not allow for that. Most pre employment contracts vigorously ensure that 
employees contract out of any IP rights that they may have and all the work 
that they do are then considered to be work done in the course of 
employment ( in the context of full time employees)  or works for hire 
contracts ( in the case of outsourced work).




The interesting argument made in this essay is the manner in which the 
personality interests of employees are dissolved in favour  of the fiction 
of the corporation that employs these employees.

Lawrence



A Penny for Their Thoughts: Employee-Inventors, Preinvention Assignment 
Agreements, Property, and Personhood

Steven Cherensky *



* B.S. 1980, The Johns Hopkins University; M.S. 1982, University of 
Michigan, Ann Arbor; J.D. candidate 1993, Boalt hall School of law, 
University of California, Berkeley.

I would like to thank Professor Rachel Moran for her assistance and 
encouragement. This Comment benefited greatly from her generosity, insight, 
and energy. Thanks also to Professor Peter Menell for his significant 
contributions to earlier drafts. Special thanks to jodie Carter, Tom 
Freedman, Gary Gold, my editors Stephanie Siegel, Ann Kim, and Jeff Rake, 
and my friends and colleagues on the California Law Review. Finally, I wish 
to thank my parents, Carl and Gilda Cherensky, for their love and support.

SUMMARY:
   ... Most technologists at American corporation work under preinvention 
assignment agreements whereby the employee-inventor promises to assign to 
the employer all interests in future patentable inventions that arise from 
the employment relationship. ... These aspects of intellectual property 
must be considered as part of any proposed resolution to preinvention 
assignment agreement disputes. ... The inventor as defined by current 
patent law is an underinclusive indicium of personality, however, because 
other entities, such as an assistant, may also have a personality stake in 
an invention. ... Third and most importantly, the personality stake that 
should be protected is the extent to which both the process and the 
physical embodiment of the invention are constitutive of the inventor's 
personhood. ... As discussed above, patent law already recognizes the 
personhood interests of inventors in two ways: by requiring the 
identification of the human creators responsible for the invention on the 
patent application, and by notation of the inventor on the issued patent. 
... If an employee created an invention during the course of employment 
that was patented in the employee's name and assigned to the employer under 
a preinvention assignment agreement, the inventor could enjoy continuing 
access to the invention through the availability of an affirmative 
"personhood" or "inventor's" defense to patent infringement actions. ...

TEXT:
  [*597]

Most technologists at American corporation work under preinvention 
assignment agreements whereby the employee-inventor promises to assign to 
the employer all interests in future patentable inventions that arise from 
the employment relationship. These agreements are typically upheld by 
courts. This Comment suggests that employee-inventors should retain greater 
property interests in their inventions. The author argues that the rubrics 
under which preinvention assignment agreements have been analyzed in the 
past--patent and contract doctrine and traditional property theories--fail 
to address the complex employee-employer and inventor-invention 
relationships implicit in organized invention. As an alternative framework 
for resolving preinvention assignment conflicts, the author proposes the 
application of personhood theory, particularly the market-inalienability 
concept forwarded by Margaret Radin. This approach suggests that an 
employee-inventor's elationship with her work can be justifiably 
constitutive of her personhood and that preinvention assignment agreements 
can interfere with this relationship. The Comment discusses specific 
proposals that preserve the personhood interests of employee-inventors 
without unduly impairing the economic interests of employer-corporations.


I

Introduction


If a man write a better book, preach a better sermon, or make a better 
mousetrap than his neighbour, though he build his house in the woods, the 
world will make a beaten path to his door.

- Ralph Waldo Emerson n1

  [*598]

The world is probably beating down the wrong path in search of the better 
mousetrap. For today, that mousetrap was likely invented not in a house in 
the woods, but rather in a corporate research and development facility. And 
it is also likely that the employee who invented that better mousetrap 
agreed, before it was even invented, to assign her entire interest in the 
invention to her employer. Such an agreement is known as a preinvention 
assignment agreement. n2

This Comment focuses on what are referred to here as "preinventions." 
Preinventions are inventions n3 that have not yet been (and may never be) 
conceived at the time the parties agree to assign potential future patent 
rights. Whereas inventions are tangible, identifiable things, preinventions 
are intangible expectancies. Although much of what is said here will apply 
to inventions as well as preinventions, the goal of this Comment is to 
better understand and help to resolve the conflicting interests of 
employee-inventors n4 and their employers in preinvention assignment 
agreements.

Preinvention assignment agreements have presented "ancient but eternal" n5 
problems of contract and patent law for courts and commentators. These 
problems are different from those raised by assignment agreements for 
existing inventions. While assignment of rights in existing inventions 
commodify and alienate the tangible invention, assignment of rights in 
preinventions commodify and alienate the inventive process. Consequently, 
parties who bargain for interests in existing inventions know or should 
know exactly what they are getting and giving up. Parties who bargain for 
preinventions have no such knowledge.

Both employee-inventors and their employers have strong proprietary 
interests in the inventions that result from the employment relationship. 
The employee-inventors' interest may be based on their investment of 
personal capital: training and education, personality, individual genius, 
extraordinary effort, creative spark, and even divine revelation. The 
employers' interest, in contrast, may be based on the financial capital 
invested in creating a work environment conducive, if not essential, to 
invention: plant and equipment, employee salaries, management and 
oversight, and opportunities for collegial exchange.

For much of this century, courts, commentators, and 
legislators  [*599]  have tried to balance the proprietary interests of 
employee-inventors and their employers in preinvention rights. n6 The 
courts have developed a comprehensive set of common law rules to allocate 
preinvention rights; however, the pervasiveness of private agreements 
allocating these rights between employee-inventors and their employers has 
made these rules all but irrelevant. Today, virtually all technical 
employees agree, as a condition of employment, to assign to the employer 
all rights to inventions conceived by the employee while at work, or in 
subject matters related to work, or while using any resources of the 
employer. n7 These preinvention assignment agreements are generally upheld 
by courts. n8

Courts may be enforcing preinvention assignment agreements in part because 
they feel such agreements fill a gap in patent law. In its current state, 
patent law (or, more accurately, instrumental arguments about granting 
property rights in order to encourage invention) cannot provide a normative 
solution to preinvention assignment disputes. The business and nature of 
invention have changed dramatically since the first Patent Act was enacted 
in 1790, but Congress and the courts have not adequately adapted the 
meaning of invention to reflect these changes. Today's Patent Code n9 
retains the eighteenth-century paradigm of the solitary,  [*600]  heroic 
inventor and fails to take into account the modern paradigm of the team as 
inventor. Thus, existing patent laws justify granting property rights to 
the inventor-entity, n10 but they do not help in determining whether the 
employee-inventor or employer should be entitled to such rights.

Similarly, courts may enforce preinvention assignment agreements in order 
to avoid difficult contract issues such as adhesion and unconscionability, 
adequacy of consideration, freedom of contract, and structural difficulties 
implicit in ex ante bargaining for speculative rights. For example, 
employers almost universally offer preinvention assignment agreements on a 
take-it-or-leave-it basis. Given the employer's advantages in bargaining 
power, n11 these preinvention assignment agreements raise thorny questions 
of contract law. By granting blanket enforcement of such agreements, courts 
avoid these questions, thereby obscuring and devaluing the contributions of 
individuals.

A word on the methodological organization of this Comment is appropriate 
here before the substantive organization is discussed. The use of 
preinvention assignment agreements to appropriate the future inventions of 
employee-inventors presents courts with a difficult problem - difficult not 
in the sense of determining what the positive law is, n12 but rather in 
reconciling patent and contract doctrine with the complex relationships 
between, and contributions of, employee-inventors and their employers. n13 
After establishing the limitations of doctrine, this Comment will proceed 
to apply traditional theories of property law to the problem. Like 
doctrine, however, traditional theory is not up to the task of resolving 
preinvention assignment disputes. Thus, an alternative theoretical approach 
- personhood theory - will be investigated as a potentially powerful tool 
for analyzing preinvention assignment disputes.

The approach taken here differs from many prior studies of preinvention 
assignment agreements by focusing on the underlying theoretical property 
issues rather than on issues of patent or contract law. General property 
law theory, however, is itself not without problems in analyzing 
preinvention assignment disputes. Most theories of property law suffer from 
the same deficiencies as does patent law when applied to rights in 
preinventions; that is, most traditional justifications of private property 
focus on the rights of claimholders as against society and do 
not  [*601]  resolve disputes between arguably legitimate claimholders. The 
focus here will be on examining claims to property interests made by 
employee-inventors and employers. It will be argued that each has 
significant, cognizable proprietary interests in preinventions; that these 
interests are different interests based on different property 
justifications; and that the property rights in preinventions should be 
disaggregated and allocated between employee-inventor and employer 
according to the interests of each.

This Comment concentrates on inventorship and the allocation of property 
rights in patentable inventions in the corporate workplace. n14 Although 
the discussion is largely relevant to invention in other organizational 
environments, such as university and government laboratories, and to other 
forms of innovation and intellectual property, such as copyrights and mask 
works, the focus is not on these other areas. Where useful, distinctions 
from and comparisons to these other areas will be made.

The substantive organization of the Comment follows the methodological 
organization outlined above. Part II discusses the limitations of patent 
and contract doctrine as applied to preinvention assignment agreements. 
Because doctrine fails to deal adequately with the problems posed by these 
agreements, Part III examines traditional property law theory as a 
potential dispositive source of legal authority. Traditional property 
justifications, it will be shown, provide little guidance for resolving 
preinvention assignment disputes. Part IV presents an alternative property 
approach for the resolution of preinvention assignment agreement disputes: 
personhood theory. Personhood theory suggests that certain rights of 
employee-inventors in their inventions be non-appropriable when those 
rights are justifiably constitutive of the inventor's personhood.

This Comment explores two consequences of applying personhood theory to the 
problem of preinvention assignment agreements. First, the employee-inventor 
should retain rights in her invention only when she can demonstrate a 
justifiable personhood interest in the invention; otherwise, the employer 
should retain all interests in the invention, including credit as the 
inventor-entity. Thus, corporate inventorship is appropriate under certain 
conditions. Second, when the employee-inventor can demonstrate a 
justifiable personhood interest in her invention, this personhood interest 
should be protected by removing the protected interest from the 
market.  [*602]

II

The Limitations of Doctrine: The Employee-Inventor and Preinvention 
Assignment Agreements Under Patent and Contract Law

Most inventions today result from the efforts of employee-inventors. n15 
The Patent Code does not address the issue of inventions arising out of 
employment relationships, but the courts have devised a common law 
allocation of patent rights between employee-inventor and employer. Most 
corporations, however, perhaps uncomfortable with the level of uncertainty 
that exists in the common law scheme, require their technical employees 
(and often all employees) to sign preinvention assignment agreements. This 
Part explores the legal context of these preinvention assignments.

A. Patents: Inventorship and Ownership

The term "inventorship" defies precise definition. The Constitution grants 
Congress the power "to promote the Progress of Science and useful Arts, by 
securing for limited Times to Authors and Inventors the exclusive Right to 
their respective Writings and Discoveries," n16 but does not elaborate on 
what is meant by "inventors" or "discoveries." Although the Supreme Court 
has often ruled on the meaning of authorship, n17 it has had little to say 
concerning the constitutional meaning of inventorship. n18

Patent law is no clearer on the subject. Under common law, inventorship 
refers to the process of conception and reduction to practice of a 
patentable invention. n19 As William Bennett notes, an inventor 
is  [*603]  simply "the agency through which invention is effected." n20 
Although this definition is straightforward to apply in the simple case of 
an individual, self-employed inventor, it becomes murky in cases where the 
invention arises from an employment relationship or where multiple 
inventors are involved.

The Patent Code does little to ameliorate these difficulties. According to 
the Code, the inventor of a "process, machine, manufacture, or composition 
of matter" n21 may obtain a patent provided that the invention is "useful," 
n22 "novel," n23 and "non-obvious," n24 the subject matter is patentable, 
n25 and the patentee complies with certain procedural requirements. n26 A 
patent, once issued, grants the patent holder the right "to exclude others 
from making, using, or selling the invention throughout the United States" 
n27 for a period of years. n28 The patent, however, does not grant the 
patent holder the right to exploit the invention itself, n29 as such right 
may be blocked by another patent. n30

Although the Patent Code defines precisely what constitutes a patentable 
invention, it is not as precise in defining the term "inventor." One 
qualification is clearly required, however: only "natural" (that is, human) 
persons may qualify as inventors. Corporations and other non-natural 
persons cannot be inventors under the Patent Code. n31 Neither the 
legislative history nor commentators have articulated a clear justification 
for denying the fiction of the corporate person. n32  [*604]

Establishing inventorship represents only the starting point for 
determining patent right ownership. Inventorship and patent ownership are 
distinct concepts under patent law. Inventorship is significant primarily 
for determining the patentability of claims and the procedural sufficiency 
of a patent application. n33 Patent ownership, by contrast, carries with it 
the temporary, exclusive right to make, use, or sell an invention. Thus, 
"inventorship" connotes a "power"-constituted n34 relationship between 
individuals (inventors and non-inventors) with respect to inventions, 
whereas "patent ownership" connotes a "claim-right"-constituted n35 
relationship between individuals (patent holders and non-patent holders) 
with respect to patents.

There is no necessary legal relationship between inventor and patent holder 
for any given invention. Although the inventor is the presumptive owner of 
property rights to patents issued for her invention, these rights are 
transferable by assignment. Patents have the attributes of personal 
property, n36 and patents and patent applications may be assigned by 
written instrument. n37 In fact, patents granted to inventors who have 
assigned their interest may be issued directly to the assignee, n38 which 
may be any  [*605]  legal entity, including a corporation. n39

B. Invention Paradigms and Metaphors: From "Hero-Inventor" to 
"Team-as-Hero" n40 and Beyond

The current Patent Code is based on the eighteenth-century view of 
invention - a view centered on a "hero-inventor" model. Eli Whitney, 
Alexander Graham Bell, and Thomas Edison, for example, represent familiar 
images of "hero-inventors." n41 Today, "hero-inventors" are less common. 
n42 Although the disappearance of the "hero-inventor" may reflect, in part, 
changes in societal values, n43 it reflects more significantly a shift from 
individual to team invention. The late-twentieth-century 
analogue  [*606]  to the "hero-inventor" is the "team-as-hero;" that is, 
invention resulting from the combined, coordinated efforts of a group 
rather than from the heroic efforts of an individual.

This Section will briefly describe some of the dominant characteristics of 
eighteenth- and twentieth-century invention and will discuss aspects of the 
modern inventive process relevant to preinvention assignment disputes. n44 
This Section will show that, while the "hero-inventor" paradigm 
inaccurately explains contemporary invention by devaluing the contributions 
of teams, support staffs, and facilities, its widely accepted replacement - 
the "team-as-hero" model - inaccurately reflects contemporary invention by 
devaluing individual contributions.

The term "inventive process" is itself inappropriate to the extent that it 
implies there exists some formula of how to invent. There is, of course, no 
such formula. Nevertheless, there are some common characteristics among the 
work environments in which much of today's invention takes place. A 
description of these common characteristics is what is referred to here as 
an "inventorship paradigm." n45 Certainly, inventorship paradigms will vary 
among industries and technologies, among firm sizes, and even from 
inventor-entity to inventor-entity. In fact, as will be argued, the 
tendency of courts, legislators, corporations, and indeed, individual 
inventors to subscribe to a single (albeit different) inventorship paradigm 
lies at the root of preinvention assignment agreement conflicts.

The patent system, as originally conceived, was intended to encourage 
invention in a regime of individual inventors that differs markedly from 
today's workplace. "When this country's patent system was adopted ... it 
was the independent, the "lone' inventor who created new ideas through the 
exercise of his inventive faculties." n46 
Eighteenth-century  [*607]  invention was characterized by the individual 
efforts of non-professional, unspecialized, untrained inventors who worked 
primarily in their "house in the woods," as Emerson would say, n47 or on 
their farms. n48 These independent inventors had little need for capital 
beyond living expenses since they did not hire employees and generally used 
readily available materials in their work.

Eli Whitney's invention of the cotton gin in many ways typifies late- 
eighteenth-century invention. n49 Whitney did not study to be an inventor; 
indeed, such an education would have been unavailable had he desired it. 
n50 While a guest at a South Carolina plantation, he heard neighboring 
planters discuss the difficulty of cleaning the local upland cotton of its 
seeds and the importance to the region of an improved cleaning machine. 
Whitney was persuaded to try his hand at a solution:



Whitney had never seen a cotton boll and had scarcely listened to the talk 
around him. But when his hostess proposed, albeit without undue urging, 
that he try to devise a machine, he pursued her suggestion ....

... A few days later he "involuntarily happened to be thinking on the 
subject and struck out a plan of a machine ...." n51

That machine, of course, was the cotton gin. Whitney built his first model 
from wood, wire, and other materials that were readily available on the 
plantation. n52

Invention has changed dramatically in the 200 years since Whitney "struck 
out a plan" of his machine. Whitney's development of the 
cotton  [*608]  gin is the inventorship paradigm envisioned by the drafters 
of the first Patent Act: the ad hoc problem-solving of the individual, 
generalist "hero-inventor." Organized invention was virtually unheard of at 
this time. n53 Although the work of independent inventors remains 
important, n54 most economically significant inventions today arise out of 
organizational environments. n55 Thus, this Comment proceeds from the 
assumption that the most important changes in inventorship paradigms over 
the last two centuries have been due to the appearance and growth of 
industrial laboratories and the professionalization of invention.

Nineteenth-century firms, were, by and large, passive consumers of 
technology rather than active participants in the inventive process. n56 
Inventors were not retained by firms as regular employees to develop needed 
products or processes - indeed, firms made little or no effort to direct 
independent inventors' efforts towards their specific needs. n57

Most firms interested in acquiring improvements adhered to this passive 
approach, because they considered invention to be a product of individual 
inspiration, which could be guided in only the most general fashion. It was 
up to the inventors themselves to direct their efforts towards particular 
markets in the hope they might gain fame and fortune. n58

Firms began to abandon this ad hoc approach to invention in the 
late-nineteenth century and sought to exert some control over invention 
through the establishment of industrial laboratories.

Early examples of influential industrial laboratories include Thomas 
Edison's "invention laboratory" established in Menlo Park, New Jersey, in 
1876, n59 the Eastman Kodak Industrial Research Laboratory 
established  [*609]  in Rochester, New York, in 1912, n60 and the 
laboratories at Bell Telephone and DuPont. n61 There are many reasons for 
the rise of industrial laboratories at the beginning of the twentieth 
century, n62 but perhaps the primary reason was the desire to improve 
efficiency and focus by bringing invention and innovation within the same 
firm. n63

Innovation has been described as "the search for, and the discovery, 
development, improvement, and adoption of new processes, new products, and 
new organizational structures and procedures." n64 Invention is a much 
narrower concept, encompassing merely the "discovery" part of innovation. 
n65 Innovation is an inherently risky and cumulative 
activity,  [*610]  often turning up "dry holes" and "blind alleys," n66 
while requiring the inventor to "build on what went before." n67 Moreover, 
innovation is complex, requires contributions from many disciplines, and 
can be very expensive.

Industrial laboratories are intended to address these aspects of 
innovation. According to one commentator, "Since innovation is so risky, so 
complex, and so expensive, companies strive to rationalize it - to build 
"innovation factories.' That's the Holy Grail that launched Bell Labs, GE 
Labs, and the very idea of industrial research in America." n68 These 
"innovation factories" are designed to provide a fertile environment for 
invention and eliminate the distractions faced by the independent inventor. 
n69

A development that paralleled and helped to facilitate the rise of the 
industrial laboratory was the professionalization of invention. n70 At 
about the time Edison established his "invention factory," science and 
invention became linked as never before. n71 This linking of science and 
invention resulted in the development of the modern engineering disciplines 
and modern technical education. n72 The formalization of the 
engineering  [*611]  disciplines, in turn, resulted in the 
professionalization of invention:

And what has engineering done for the inventor? Through the development and 
application of scientific principles engineering has not only supplied 
necessary controls for design, construction, and operation, but it has in 
addition provided the great background of knowledge for use in further 
invention. In earlier times the inventor was an individualist. Today he is 
most likely to work in groups. The time has passed when it is easy for the 
lawyer or the doctor to come forth with a fundamental invention. n73



The professionalization of invention is, in some respects, a 
self-perpetuating condition that has contributed both to the decline of the 
independent inventor and to the routinization of invention. n74 Today, 
virtually all would-be inventors will complete some minimum standard of 
technical training. It is debatable whether scientific training is now 
required for invention or whether that is simply a perception entertained 
by firms. n75 Whichever the case, at least an undergraduate degree in 
science or engineering is considered generally to be a prerequisite for 
many types of inventive employment. n76 By requiring that technical 
employees come from similar educational backgrounds, the 
professionalization of invention has served to limit the intellectual, n77 
gender, n78 and racial  [*612]  diversity n79 of inventors.

The rise of the industrial laboratory and the professionalization of 
invention may have come at great financial and creative cost. Prospective 
inventors must make a significant financial investment to attain the level 
of education required for today's inventive careers. This investment may 
cause individuals to become risk-averse, making the secure salaries of 
industrial laboratories even more enticing. Furthermore, the standard 
training received at most universities emphasizes tools and techniques that 
are beyond the financial means of most individuals. Thus, professionalism 
can undermine entrepreneurship, which lies at the heart of the traditional 
concept of patent law. As one commentator has asked:

Since invention has traditionally been so closely bound up with 
independence and since, even in this century, so many significant 
innovations have seen the light of day in industrial laboratories, it may 
be asked whether the growing importance of the industrial research 
laboratory is an unmixed blessing. To put it in terms of policy, is the 
trend one which should be consciously encouraged? Or is it one to which we 
should seek to set limits by trying to make easier the lot of the inventor 
who prefers to choose a path for himself? n80



The development of institutional research and the professionalization of 
invention reflected general societal trends toward 
specialization  [*613]  and the division of labor, as connoted by the 
phrase "invention factory." It was believed that the economies of mass 
production and division of labor that Adam Smith documented in the 
production of pins n81 could be applied to the production of inventions. 
n82 Inventions are not pins, however, and industrial laboratories are not 
necessarily efficient producers of inventions. n83 Moreover, the 
specialization of labor encouraged, if not demanded, by institutional 
research can work to the disadvantage of individual employee-inventors. 
While firms can spread technology risks by acquiring a diversified 
portfolio of technologically trained employee-inventors, it is 
impracticable for individual employee-inventors to acquire a diversified 
portfolio of technology- or firm-specific skills. n84

Thus, the "team-as-hero" paradigm of invention has both positive and 
negative implications. The benefit of "team-as-hero" inventing is that 
through specialization and division of labor, inventions that might never 
have resulted from individual, independent, haphazard efforts can be 
realized. A darker side is the personal cost to the individual inventor, as 
described above. There may be societal costs as well. Revolutionary 
inventions appear to occur less frequently in large institutional 
environments. n85 Perhaps this is due to the numbing effects of the 
professionalization of invention or to the exigencies of "rational" firm 
goal-setting. Another possibility, though, is that the organizational 
environments, complete with preinvention assignment agreements that remove 
individual incentives (and, as will be argued in Part IV, alienate the 
inventor's personhood interests) constitute structural impediments to truly 
creative  [*614]  invention. These impediments reflect a larger cost 
associated with the popular perception of "team-as-hero" inventing: the 
societal devaluation of inventors and inventing. It is difficult for the 
general public, legislatures, and courts to appreciate the efforts of those 
inventors who may be perceived as "corporate tools" and more difficult 
still to appreciate the efforts of individual members of corporate teams. n86

The preceding pages may paint a rather depressing picture of corporate 
drones marching blindly but methodically through corporate laboratories 
squelching individual invention and creativity - "crowds of people milling 
around with an air of fictitious activity, behind a facade of massive 
mediocrity." n87 But this scenario is clearly not representative. While 
independent invention may be on the decline, individual invention is still 
thriving. Individuals invent, even in large organizations. n88 In fact, 
much of what teams do at industrial laboratories can be characterized more 
as innovation or development than invention; that is, corporate 
laboratories and teams "rationalize" innovation, not invention.

The act of invention is still described by many commentators as essentially 
an individual act, even within large corporate laboratories. n89 Consider 
the comments of a CEO of a large corporation known for innovation:

The creative process usually starts with a brilliant idea ....

....

... Innovation is an emotional experience.... The desire to innovate comes 
partly from the genes; you're born with it. It also comes from your early 
life, your education, the kind of encouragement  [*615]  you got to be 
creative and original. Innovative people come in all shapes and sizes and 
in all personality types. Some people are happiest when they're wrestling 
with a problem; I'm one of those. Others go into a green funk. They're 
miserable and depressed until they have the answer. But you can't have a 
good technologist who's not emotionally involved in the work. You can't 
have a good technologist who doesn't wake up in the middle of the night 
searching for answers. You can't have a good technologist who doesn't come 
into the lab eager to see the results of last night's experiment. n90



The danger, then, of the "team-as-hero" paradigm is that it is applied 
overinclusively; that is, those outside the team (including courts) 
discount the contribution of individuals and focus solely on the team. The 
challenge faced by Patent Code revisers is thus to develop a concept of 
inventorship which recognizes both organizational and individual inventors.

This Section has discussed how the inventorship paradigm upon which the 
Patent Code was premised - "hero-as-inventor" - is, in many respects, not 
the inventorship paradigm under which invention proceeds today. Similarly, 
the inventorship paradigm that has largely supplanted the 
eighteenth-century paradigm - "team-as-hero" - does not accurately describe 
much of today's invention. Neither paradigm nor, for that matter, the 
Patent Code or the courts recognize the special problems of the 
employee-inventor.

Perhaps the problem is that "hero-inventor" and "team-as-hero" are more 
metaphor than paradigm. That is, "heroes" and "teams" are merely figures of 
speech that suggest the two poles of inventorship rather than models that 
accurately describe inventorship in any particular instance. If this is 
true, then it is important that the law not rely on one or the other as a 
rigid paradigm, but rather be flexible enough to encompass the spectrum of 
inventorship that exists between the poles.

Despite the problems with using the term "inventorship paradigm," it 
continues to be useful when employed as a shorthand means of expressing 
changing conceptions and meanings of inventorship. As used in this Comment, 
then, "inventorship paradigm" will have a very broad meaning, encompassing 
both model and metaphor.

This Section has discussed some of the many changes that have occurred over 
the last 200 years in inventorship and in the public and legal perception 
of inventorship, and how patent law has remained relatively  [*616]  static 
during this time. n91 The next Section will document how the common law has 
played a "gap-filling" role n92 by resolving employee-inventor disputes in 
light of the disjunction between changing inventorship paradigms and the 
relatively unchanging patent law. The next Section will also discuss how 
private agreements between employee-inventors and their employers have 
largely supplanted the common law formulation.

C. The Legal Status of Employee-Inventors

1. The Common Law

Absent an express agreement between the parties, courts use equitable 
common law principles to allocate property rights in inventions between 
employee-inventors and employers based on the nature of the employment 
relationship, the subject matter of the invention, and the resource 
contributions of the employer. The common law formulation n93 distinguishes 
among three types of employment: (1) specific inventive employment, which 
is employment for the express purpose of creating employer-specified 
inventions; (2) general inventive employment, which is typically referred 
to today as "research," "design," or "development" employment; n94 and (3) 
general employment. Specific inventions are the  [*617]  property of the 
employer. n95 General inventions - which include inventions of specifically 
inventive employees that are not employer-specified, inventions of 
generally inventive employees, and inventions of general employees - are 
the property of the employee-inventor, though employers have a "shop-right" 
or non-exclusive right to practice the invention if it is developed on 
company time or though the use of company resources. n96 Free inventions, 
which include all other inventions, are the exclusive property of 
employee-inventors. n97

Today, the operational significance of the common law allocation of 
property rights between employee-inventor and employer is slight due to the 
prevalence of express preinvention assignment agreements, which are 
essentially private agreements not to abide by the common law or default 
allocation. Nevertheless, the common law rules are instructive in that they 
provide an indication of norms, policies, and usages as understood by the 
courts over a period of time. n98

2. Preinvention Assignment Agreements

The common law approach applies equitable principles to the factual 
circumstances of individual cases. Most employers are unwilling to rely on 
the uncertainty n99 and perceived equities n100 of the common law. Thus, 
most employers make preinvention assignment agreements a condition of 
employment. n101 These agreements supersede the common 
law  [*618]  allocation rules.

This Comment argues that, based on property law principles, preinvention 
assignment agreements should not be enforced in their entirety. Such 
agreements appropriate from the employee-inventor that which should be 
inalienable. n102 This property analysis makes the contractual analysis to 
some extent irrelevant. n103 However, because the solution proposed by this 
Comment will leave much of the attempted preinvention transfer intact, and 
because courts rely so heavily upon a contractual analysis in resolving 
preinvention assignment disputes, this Section will address some of the 
salient points of preinvention assignment agreements qua contracts. 
Contrary to the position generally taken by the courts, this Section will 
argue that these agreements are problematic under a contract law analysis.

The scope of most preinvention assignment agreements is broad. n104 Some 
agreements require employee-inventors to assign all 
inventions  [*619]  made during the employment term, n105 while others 
reach only those inventions related to the employer's business or research 
interests or made with the assistance of the employer's resources. In some 
cases, these contracts may extend to periods prior to or subsequent to the 
employment period.

As a general rule, courts uphold preinvention assignment agreements as 
valid and enforceable contracts. n106 The agreements may not be enforced, 
however, if the employer overreaches, for example, by attempting to 
appropriate inventions unrelated in subject matter to the employment 
relationship or inventions conceived long after the termination of the 
employment relationship. n107

A threshold question in determining the validity of a preinvention 
assignment agreement is whether federal or state law applies. Although 
patents are creatures of federal law, state law is not preempted simply 
because a patent is at issue. n108 For example, federal statutory law, 
which has exclusive control over the manner in which patents may be 
assigned, n109 contains no provision for the assignment of patents for 
inventions not yet made. n110 Thus, agreements to assign patents have no 
federal statutory basis. n111 Consequently, "state law, rather than 
federal  [*620]  patent law, generally governs ownership rights in 
patentable inventions, including the rights as between an employer and 
employee." n112

Courts generally enforce preinvention assignment agreements on the basis of 
freedom-of-contract principles. n113 Of course, "freedom of contract" is 
really free only if there is parity of bargaining power between 
the  [*621]  contracting parties. n114 This parity may be lacking between 
employee-inventors and employers. Today, the majority of employment 
contracts are offered on a "take-it-or-leave-it" basis. n115 The process by 
which an employee-inventor agrees to assign her preinvention rights to her 
employer is not one of hard arms-length bargaining, "but rather of a fly 
and flypaper." n116 As a result, most commentators agree that freedom of 
contract does not generally exist in the employee-inventor context; that 
is, preinvention assignment agreements are contracts of adhesion. n117

The fact that a contract is adhesive does not, however, end the court's 
inquiry. As one court recently noted in a preinvention assignment agreement 
context:

The determination that a contract is adhesive is "only the beginning and 
not the end of the analysis insofar as enforceability of its terms is 
concerned." A contract of adhesion can be fully enforced according to its 
terms unless some other factors exist, such as the oppressive or 
"unconscionable" provision. Unconscionability includes " "... an absence of 
meaningful choice on the part of one of the parties together with contract 
terms which are unreasonably favorable to the other party.'" n118

There are two types of unconscionability: substantive and procedural. 
n119  [*622]  Substantive unconscionability refers to grossly one-sided and 
oppressive contractual terms; n120 procedural unconscionability refers to 
the unfair process through which an agreement is reached. n121 Preinvention 
assignment agreements present arguable cases of both types of 
unconscionability.

A claim of substantive unconscionability must be based on the absence of 
meaningful choice together with unreasonable contract terms. In the 
preinvention assignment context, absence of meaningful choice may exist 
because such agreements are used on an industry-wide basis. n122 A claim of 
procedural unconscionability must be based on unfair surprise together, 
again, with unreasonable contract terms. The unfair surprise in the 
preinvention assignment context may arise if a valuable invention comes out 
of the employment relationship even though such an event seemed highly 
unlikely at the time of contracting. n123 Many employee-inventors may be 
quite surprised to find out that they have no rights to their inventions, 
particularly when the inventions are unrelated to the employer's business 
or not developed on company time. The preinvention assignment agreement 
thus eviscerates a basic expectation of the employee-inventor.

In the preinvention assignment context, both substantive and procedural 
unconscionability rest ultimately on the reasonableness of the agreement's 
terms. n124 Here, reasonableness is determined by analyzing the adequacy of 
consideration. This analysis is particularly difficult in the preinvention 
context because the parties are bargaining for something which does not 
exist and which may never exist, and thus is not easy for the parties to 
evaluate.

Ex ante bargaining for patent rights in preinventions is difficult due to 
their speculative nature; the likelihood that any given employee-inventor 
will invent a truly valuable invention sometime in the future is 
exceedingly  [*623]  small. n125 Neither employee-inventor nor employer is 
likely to evaluate properly the worth of a given employee-inventor's 
preinvention rights ex ante. The employee-inventor will have little basis 
for making a realistic estimate of the likelihood of invention or of any 
such invention's value. The employer, particularly the large employer, may 
have an informational advantage over employee-inventors based on the 
employer's ability to evaluate preinvention rights statistically over a 
large sample size. n126 The employer will probably be unable to account for 
special attributes of particular employees, and thus will discount the 
value of preinvention rights of those employees most likely to be the best 
inventors. Preinvention assignment agreements are in this way similar to 
contracts between firms and consumers where the difference in access to 
information has led to regulation of such contracts. n127

Ex post bargaining presents equally difficult problems. Even if the total 
value of the invention may be agreed upon by the parties, the value of each 
party's contribution will be difficult to agree upon. The employer will 
tend to overvalue the contribution of the work environment and the 
employee-inventor will tend to overvalue her individual contribution.

Some preinvention assignment agreements offer no additional consideration 
for the assignment of an employee-inventor's invention to the employer 
beyond the continued employment of the employee. n128 Most courts hold that 
even this is adequate consideration, since the employee-inventor is 
dischargeable "at will." n129 Certainly, there is no requirement that the 
consideration approximate the value of the invention, though some courts 
may find that nominal consideration is inadequate. n130  [*624]

Is continued at-will employment adequate consideration for the assignment 
of valuable patents? Take the case of an employee-inventor who agrees to a 
preinvention assignment clause but never develops a patentable invention. 
Is she in breach of her contract? Almost certainly she is not. n131 The 
employer cannot reasonably expect that a particular employee-inventor will 
conceive of a valuable patentable invention. After all, a patentable 
invention, by definition, must be unanticipated (that is, "novel" and 
"non-obvious"). n132 Similarly, most employee-inventors do not consider it 
likely that they will conceive of a valuable patentable invention. Thus, 
the terms of the assignment clause are probably not of utmost importance at 
the time of the contract's formation. It is therefore unlikely that either 
employee-inventor or employer really mistakes continued employment as 
consideration for the assignment of valuable patents by the employee-inventor.

This Section has discussed how employers use their bargaining advantage 
over employee-inventors to appropriate rights in inventions that would 
otherwise accrue to the employee-inventors under the common law 
formulation. The prevalence of preinvention assignment agreements can be 
attributed to a form of market failure: labor monopsony. n133 There is, in 
effect, no market for technical jobs that does not require relinquishment 
of preinvention rights. This market failure has eviscerated the policy of 
individual incentive and recognition implicit in a Patent Code that 
recognizes only human inventors. n134 Because failures of the 
self-regulatory mechanism of the market are viewed as appropriate occasions 
for public regulation, n135 state and federal legislators have initiated 
several responses to the proliferation of preinvention assignment 
agreements. These responses will be examined in the following 
Section.  [*625]

D. Legislative Responses to Preinvention Assignment Agreements

To date, five states have enacted legislation to limit the reach of 
preinvention assignment agreements. n136 The statutes all require some 
relationship between the employee-inventor's invention and the employer's 
resources, or its present or contemplated business areas, in order to 
justify mandatory assignment. n137 None of the state statutes, however, 
give employee-inventors any rights to inventions related to the work that 
the employee-inventor was hired to perform for the employer.

The state statutes have been effective in restricting employers from 
overreaching or appropriating inventions of employee-inventors where those 
inventions do not relate to the employer's actual or anticipated line of 
business or research. It is reasonable to expect, however, that most 
inventions - particularly most important inventions - an employee-inventor 
might produce would relate to the employer's business, and more 
specifically, to the actual work the employee-inventor performs for the 
employer; after all, this is the area of the employee-inventor's expertise 
and focus. n138 Thus, the state statutes by design do not reach the most 
important inventions of employee-inventors.

Federal legislation to reform patent law with respect to private sector 
employee-inventors has been proposed at least nine times since 1963. n139 
The proposed bills ranged from a return to the common law allocation of 
patent rights n140 to mandatory compensation for 
employee-  [*626]  inventors who assign patent rights to employers. n141 
None of these proposals has been enacted. It is unlikely that such 
legislation will be enacted in the foreseeable future due to the strong 
lobbying efforts of corporate employers. n142 Moreover, engineer- and 
scientist-employees and potential employees represent a diffuse and poorly 
organized lobby. n143

This Part has discussed the failure of patent and contract doctrine to 
resolve adequately the problem of the employee-inventor. Patent law is 
limited by its antiquated and rigid conception of inventorship. Under its 
current formulation, patent law does not address the inventorship 
environments in which today's employee-inventors operate. Similarly, 
contract law is limited by its wooden application of freedom-of-contract 
principles to situations in which market failure has made such principles 
inappropriate. In addition, contract law analysis fails to address the 
underlying property issues implicated by preinvention assignment 
agreements. Finally, federal and state reforms have not resolved the 
problems of preinvention assignment agreements because policymakers have 
viewed the dispute in terms of inadequate contract or patent doctrine.

Part III will look beyond doctrine to theory in an attempt to resolve 
preinvention assignment disputes. Several traditional private property 
justifications will be examined in the context of preinvention assignment 
disputes.  [*627]

III

The Limitations of Theory: The Employee-Inventor and Preinvention 
Assignment Agreements Under Traditional Theories of Property

As discussed in Part II, commentators, judges, and legislators have been 
aware for years of the limitations of patent and contract doctrine as 
applied to the employee-inventor. Yet little significant reform has 
occurred at judicial or legislative levels. Although there are possible 
structural explanations for the lack of reform, n144 this Comment will 
focus on a theoretical explanation: that preinvention assignment disputes 
are ultimately a property law problem rather than a contract or patent law 
problem, and that traditional property law itself is ill-equipped to 
resolve these disputes.

This Part will examine how, although preinventions share many of the 
attributes of real and personal property, n145 traditional property law 
theory is of limited utility due to the distinctive nature of the property 
and the manner in which the property is created within the 
employer-employee relationship. Although they are ultimately rejected, 
traditional property law theories are useful for illuminating the strengths 
and weaknesses of the approach advocated in Part IV: the removal of an 
employee-inventor's future inventions from a contract-law-only regime (a 
regime of full market alienability) to a property law regime (a regime of 
partial market inalienability).

A. The Distinctive Nature of Intellectual Property

An appreciation of the distinctive nature of intellectual property is a 
necessary prerequisite to the application of property theories to 
preinvention disputes. This Section will briefly describe those attributes 
of intellectual property that distinguish it from other forms of property, 
such as real property and tangible personal property.

The Patent Code provides that "patents shall have the attributes of 
personal property." n146 Patents, and indeed, all forms of intellectual 
property have some of the attributes of personal or tangible property, such 
as the right to exclude and the right to alienate. However, there are 
significant differences between the nature of intellectual property and 
that of personal or tangible property. Because of these differences, some 
of the property rules that govern tangible property may be inappropriate 
for intellectual property.

Several distinctive aspects of intellectual property are of 
particular  [*628]  significance in the preinvention context: intellectual 
property has both "free good" and "public good" attributes; n147 
intellectual property rights are of limited scope; n148 and intellectual 
property rights have traditionally been thought of as a "democratic" form 
of property. n149 These aspects of intellectual property must be considered 
as part of any proposed resolution to preinvention assignment agreement 
disputes. n150  [*629]

B. Traditional Property Theories

Although a number of theories have been put forth to justify the concept of 
private property, n151 those most frequently invoked are based on either 
natural law or utilitarian foundations. There is a certain tension between 
these two bases, for, as will be demonstrated, natural law focuses on the 
rights of individuals at the expense of the general welfare of society, 
whereas utilitarianism emphasizes general welfare at the expense of 
individual right. n152 This dichotomy may help to explain why neither 
theory is particularly helpful in resolving preinvention assignment 
disputes, for both employers and employee-inventors can make legitimate and 
persuasive individual rights and general welfare arguments.

1. Natural Law Justifications

The term "natural rights" refers to universally recognized rights 
attributable to human nature or to immutable conceptions of "reason" rather 
than to the enactment of statute. n153 The Declaration of Independence, for 
example, is based on a natural rights justification. n154 Although the 
Declaration of Independence does not speak directly of natural rights in 
property (except obliquely through the phrase "pursuit of happiness"), such 
rights were widely regarded as self-evident in eighteenth- and 
nineteenth-century America: "It may then be taken as 
an  [*630]  established proposition that whatever thing that is 
property-subject-matter which a man makes out of materials belonging to no 
one else, is his exclusive property by natural right." n155

Natural rights form the basis of a common law right of inventors to use 
their inventions. n156 The natural right and common law right are often 
treated interchangeably, n157 and will be so treated here. The relationship 
between natural or common law rights in inventions and statutory rights 
conferred by patents ought not to be confused, however. The natural law or 
common law right is the right of an inventor to make, use, or sell her 
invention. n158 This right is non-exclusive. An inventor's natural right 
does not preclude others from making, using, or selling the invention, once 
the invention is disclosed to the public. n159 The patent right (if held by 
the inventor) is broader than the common law right, for it is the patent 
that grants the right to exclude others from making, using, or selling the 
invention. n160

Therefore, although natural rights in inventions are recognized by the 
courts, they may be extinguished or suppressed through patents or by other 
statutes. n161 Since patent rights are granted, if at all, to the first 
inventor of an idea, n162 the natural rights of later independent inventors 
of equivalent inventions are temporarily suppressed by the patent rights of 
the former. n163 Exclusive rights in inventions are not only distinct 
from  [*631]  natural rights in inventions, they are also "at odds with the 
inherently free nature of disclosed ideas." n164 Furthermore, any natural 
rights justification for ownership of ideas would seem to be offset by a 
natural rights argument to copy the ideas of others. n165

The distinction between the natural rights of inventors and patent rights 
granted by statute, however, does not rule out a natural rights basis in 
patents. The "embarrassment of an exclusive patent" n166 must be justified 
on some sound, reasoned, moral basis. n167 Natural rights could provide 
such a justification; that is, by enacting the Patent Act, Congress could 
have been trying to protect or codify the natural rights of inventors.

The natural right of inventors to the use of their inventions has long been 
recognized, usually conceptualized as a form of first occupancy or 
discovery. n168 Natural rights also form the basis for other justifications 
of private property, such as the labor justification. n169 Often, however, 
natural rights are asserted as an undifferentiated 
justification  [*632]  for intellectual property. First occupancy and 
undifferentiated natural rights justifications and their application to 
preinventions will be discussed first, followed by a discussion of labor 
theory.

a. First Occupancy Justifications

First occupancy represents one potential natural- rights-based 
justification for patent rights. The first occupancy justification proposes 
that previously unowned property belongs to the first party to "occupy" the 
property. n170 Property justifications based on first occupancy have, 
however, been widely criticized. n171 First occupancy provides a 
satisfactory justification for private property ownership, it has been 
argued, only when certain conditions are met; two such conditions are: "(1) 
the object occupied is unowned; and (2) occupation is in some relevant 
sense actual as opposed to intentional or declaratory." n172 Neither 
condition is satisfied in the case of preinvention assignment agreements.

The first requirement for first occupancy seemingly cannot be resolved in 
the preinvention assignment context. An invention is, of course, unowned 
until invented; once invented, however, it can be claimed immediately by 
both employee-inventor and employer. Each can claim a natural right as 
"inventor" based upon first occupancy. n173 Thus, while natural rights 
arguments may support patent rights for inventor-entities as against 
society, natural rights do not appear helpful in justifying patent rights 
of employee-inventors as against their employers (or vice versa). In the 
parlance of property law, the act of invention by an employee-inventor does 
not create a single first occupant but rather a joint first occupancy in 
the property.

The second requirement for first occupancy - actual occupancy (or 
exploitation) of the invention - is not a condition precedent to 
enforcement of patent rights under current patent law. Thus, a corporation 
could sue an inventor for infringing a patent issued for her invention 
(assuming that patent had been assigned to the corporation) merely on the 
basis of the corporation's status as patent holder. There need be no 
showing that the corporation ever had any intent to make, use, or sell 
the  [*633]  invention. In other words, contrary to the requirements of 
first occupancy, ownership can be based on a declaratory occupancy. n174

b. Normative Labor Justifications

The labor theory is the predominant property justification articulated in 
Anglo-American jurisprudence and philosophy n175 and thus requires careful 
consideration when analyzing the property issues at stake in preinvention 
disputes. The labor theory is generally attributed to John Locke and the 
influential chapter on property in his Second Treatise of Government. n176 
Locke's theory has both a normative and an instrumental justification. n177 
The normative justification maintains that society rewards labor with 
property because labor is unpleasant and should be rewarded, n178 whereas 
the instrumental justification maintains that society rewards labor with 
property because labor (the expenditure of which is beneficial to society) 
is unpleasant and would not be expended without reward. n179 Although the 
two justifications are clearly distinct, it can often be difficult to 
determine which theory is being invoked by the courts. n180 In order to 
avoid such confusion, only the normative justification  [*634]  will be 
discussed under this heading; the instrumental (or utilitarian) 
justification will be addressed under a separate heading.

In his Second Treatise, Locke articulates three distinct but related 
normative labor justifications for property. n181 The first normative 
justification - referred to here as the basic labor justification - 
proceeds in three steps:

(1) one's body is one's property;

(2) thus, one's labor - the product of one's body - must be one's property;

(3) thus, the product of one's labor must also be one's property. n182

The second justification - referred to here as the "value-added" 
justification - claims that one's labor, which is one's property, adds 
value to things as they exist in their natural unlabored-upon state, and 
this addition of value justifies property in the thing labored upon. n183 
The third justification - referred to here as the "labor-desert" 
justification - maintains that one's labor, which is one's property, adds 
value to things as they exist in their natural unlabored-upon state, and it 
would be unjust for others to appropriate the benefit of one's labors, so 
long as the laborer  [*635]  leaves "enough and as good" in the commons for 
others. n184

Although Locke's normative labor justifications have come under some 
criticism from commentators, n185 each provides powerful arguments in 
support of allocating intellectual property rights to inventors rather than 
to society. n186 However, the issue underlying preinvention assignment 
disputes is not whether society should allocate intellectual property 
rights, but rather, how society should allocate such rights. None of 
Locke's normative justifications provides a satisfactory answer. Instead, 
the justifications raise additional questions. Who is the laborer under the 
basic labor justification: the employee-inventor or the employer? What 
added the value under the value-added justification: the 
employee-inventor's personal capital or the employer's financial capital? 
And who deserves to be rewarded under the labor-desert justification? Once 
again, the lack of a meaningful legal definition of inventorship - one that 
reflects contemporary models of invention - stands in the way of a 
satisfactory resolution.

2. Utilitarian (or Instrumental) Labor Justifications

Instrumental justifications n187 have long been recognized as the basis for 
both statutory and common law intellectual property rights. n188 In fact, 
the usual justification for intellectual property in general, and the 
patent system in particular, is an instrumental one: society rewards 
inventors with patents (that is, provides exclusive rights to make, use, 
or  [*636]  sell inventions) because it must do so in order to encourage 
innovation. n189 The instrumental justification states that real work is 
required to innovate, and such work is unpleasant enough (at least, 
relative to leisure) that a rational actor would not engage in it without 
the expectation of some benefit. n190 Thus, people should be rewarded with 
property to motivate them to do work. n191

With respect to intellectual property, the instrumental argument contends 
that society rewards inventors and authors with patents and copyrights 
because inventors and authors must be motivated to exert themselves to 
create. This theory relies on four essential premises. First, inventions 
require labor; in other words, the "eureka" model of invention (that is, 
invention by a sudden stroke of genius) either does not apply or applies so 
infrequently as to justify a per se reward. n192 Second, the labor of 
invention is unpleasant, or at least less pleasant than leisure. n193 Thus, 
inventors will not invent simply for the love of it; they need external 
incentives. n194 Third, inventions, in aggregate, improve social welfare. 
Thus, it is worthwhile for society to provide incentives for inventors to 
suffer the unpleasantness of labor. Finally, the "public good" attribute of 
inventions requires intellectual property protection for inventors to 
appropriate value from their inventions. n195

Courts and legal commentators often rely on instrumental labor 
justifications for the patent system. Congressional grants of exclusive 
patent rights to inventors are frequently conceptualized as a quid pro quo 
from society to inventors (although there is far from universal agreement 
as to what is the quid and what is the quo). n196 The most commonly 
articulated  [*637]  purpose of patents is to foster or stimulate 
invention. n197 This is often the sole purpose articulated by the courts. 
n198 Occasionally courts have noted additional instrumental purposes for 
the patent system, such as creating an incentive to disclose inventions. n199

Economic commentators, too, tend to frame the purposes of the patent system 
in incentive-based terms. For example, Edwin Mansfield has identified three 
justifications for patent laws: (1) to induce individual inventors to put 
in the work required to produce an invention; (2) to induce firms to make 
the investments required to bring the invention to commercial use; and (3) 
to induce firms to disclose inventions earlier than would otherwise be the 
case. n200 Economic arguments, such as Mansfield's, tend to focus on the 
social utility of inventions and the need for inventors to appropriate 
rents on their creations. It should be noted, however, that not all 
economists are convinced about the efficacy of patent  [*638]  laws in 
fostering invention. n201

Setting aside these concerns about the efficacy of patent laws, it remains 
unclear how one would resolve preinvention assignment disputes based on 
instrumental justifications. The resolution of these disputes would seem to 
depend upon the inventorship paradigm that one accepts. Adherents of the 
"hero-inventor" paradigm are sensitive to the need for individual 
incentives. n202 "Team-as-hero" proponents stress the importance of 
providing incentives for investment of capital in inventive activities. 
n203 Both arguments have merit, and there appears to be no 
analytic  [*639]  basis upon which to favor one view over the other. It is 
possible to argue that the purposes of the patent system are best furthered 
by providing incentives for individuals to invent or by providing 
incentives for firms to invest in invention.

One commentator, Professor Jay Dratler, has proposed recognizing the need 
for incentives for both employee-inventors and their employers by dividing 
ownership of patent rights between individuals and firms according to the 
relative extent of "extraordinary effort" each has contributed towards the 
invention. n204 Because the relationship between patent incentives and 
inventive output is difficult to demonstrate, n205 however, it is difficult 
to imagine how instrumental arguments can be used to divide the patent 
incentive between employers and employee-inventors. Additionally, as 
Dratler himself has persuasively argued, incentives do not act on an 
undifferentiated corporate entity but rather upon individuals within the 
corporate structure. n206 When the roles of individuals other than 
inventors within firms are examined, patents may not provide real 
incentives to innovate. n207  [*640]

One might argue that it does not matter whether the employee-inventor or 
employer receives the initial patent entitlement because the parties will 
distribute it between themselves by private agreement so as to maximize 
inventive productivity. n208 This argument is flawed on several grounds. 
First, it assumes that transaction costs are zero. As discussed earlier, 
however, transaction costs are particularly high in the preinvention 
context because of the difficulties of ex ante bargaining for speculative 
rights, and those of ex post bargaining where the contributions of the 
parties are hard to quantify objectively. n209 Second, this claim assumes a 
functioning market for employee-inventors. In fact, the market for 
technical employees is susceptible to contracts of adhesion. n210 Finally, 
the argument assumes that firms and society value inventions similarly. In 
reality, a given invention may be of little value to a particular firm but 
of great value to society generally (or vice versa).

Instrumental labor arguments, then, are not useful in resolving 
preinvention assignment conflicts. Even if incentives are required to get 
inventor-entities to invent, it is impossible to determine ex ante which 
component of the inventor-entity - employee-inventor or employer - requires 
that incentive. Moreover, even if ex post determinations can be made to 
allocate intellectual property rights to the employee-inventor or employer 
based upon relative contribution or other criteria, such determinations, 
strictly speaking, are normative rather than instrumental in approach. 
Furthermore, any incentive effect of an ex post reward would be severely 
attenuated due to the extremely speculative nature of the reward: the 
likelihood of successful invention is speculative, the likelihood of a 
patent award upon success is speculative, n211 and the likelihood of a 
property interest in the patent if awarded is speculative since the 
relative contributions of the parties cannot be determined ex ante.  [*641]

3. The Failure of Traditional Theories

None of the natural law and utilitarian theories discussed in this Comment 
is appropriate for resolving preinvention assignment disputes because none 
adequately distinguishes between the employee-inventor and employer. 
Similarly, other justifications that have been used for private property 
generally and for patents in particular n212 provide little guidance in 
resolving preinvention assignment disputes. Given this failure of 
traditional theories, it is not surprising that employee-inventors and 
employers have been unable to arrive at a contractual agreement that is 
satisfactory to both parties. Perhaps, then, it is time to go beyond the 
traditional theories in search of a resolution for preinvention assignment 
disputes.

IV

Personhood and the Employee-Inventor: An Alternative Framework for the 
Resolution of Preinvention Assignment Disputes

Part II explained that the proliferation of preinvention assignment 
agreements was partly a response by corporations to changes in inventorship 
paradigms that were not reflected in the patent law conception of 
inventorship. Although these agreements present numerous contractual 
difficulties, they are generally enforced by the courts, perhaps in 
recognition of the deficiencies in patent law.

Part III responded to the limitations of contract and patent doctrine by 
applying traditional property justifications to the allocation of property 
rights in preinventions. These traditional justifications were found 
inadequate for resolving preinvention assignment disputes. However, the 
full range of theoretical property justifications was not exhausted in Part 
III. This Part of the Comment will examine an alternative theoretical 
property framework: personhood theory.  [*642]

A. Personhood Theories of Property

The personhood theory of property focuses on the relationship between 
property and personality. Property, it is argued, is justified because it 
is conducive, perhaps necessary, to the development of personality. 
Personality has many meanings. For example, personality can refer to "moral 
and political personhood," n213 "awareness of individuating 
characteristics," n214 or "the desirable integration of the self's thoughts 
and attitudes." n215 Every meaning of personality contains some notion of 
the person as an autonomous, moral, individuated agent. Although different 
formulations of personhood theory emphasize different meanings of 
personality, elements of each of these meanings are always present.

Personhood theory has been characterized here as an alternative theory of 
property in the sense that the analysis is, to some extent, outside the 
mainstream of judicial, if not philosophic, thought. However, personhood 
theories of property are by no means new. Elements of a personhood theory 
of property are evident in the work of Plato and Aristotle, n216 although 
personhood theory as we understand it today was first hinted at in the work 
of Kant in the eighteenth century. n217 Kant, however, was working within a 
natural rights framework, n218 and thus Kantian personhood is really more a 
variant of traditional property theory than an alternative theory. 
n219  [*643]

1. Hegelian Personhood

An alternative philosophy of property and its relationship to personality 
independent of natural rights or utilitarian justifications was developed 
by Hegel in the early nineteenth century, based on his conceptions of will, 
freedom, and personhood. n220 Hegel believed that each person has both an 
internal and an external existence. n221 One's internal existence is her 
will, and one's external existence is her sphere of freedom. n222 Hegel 
stressed the importance of self-actualization, or the lack of dependence on 
an other. n223 However, self-actualization and the extension of one's 
sphere of freedom are achieved, in Hegel's view, not by withdrawing from 
the external world but rather by "overcoming it," n224 or putting one's 
will into external objects - into property.

For Hegel, freedom meant relating to external objects so that they become 
integrated into one's personality. Personality is the reconciliation of the 
inner self and external world. n225 Property - the relationship between 
persons and things n226 - is the means by which we achieve this 
reconciliation. Property, then, is central to Hegel's theory of the 
fully  [*644]  self-actualized free person; it is the essence of 
personality. n227

The rules of Hegelian property law flow directly from the Hegelian 
conception of property. To make a thing one's property, one must be the 
first n228 to take actual possession n229 of the thing, or the first to 
mark the thing as one's own. n230 Property, in the form of ordinary 
external things, is alienable, n231 but property which forms an essential 
element of personality must be inalienable. n232

2. Radinian Personhood

In recent years, Professor Margaret Radin has used an essentially Hegelian 
framework to extensively examine the relationship between property and 
personhood. n233 Property rights exist, Radin argues, 
because  [*645]  people achieve self-identification (that is, they define 
their "selves" as people) through external objects. n234 Certain objects 
become "bound up with personhood" n235 because of the way we use those 
objects to define ourselves as people. Unlike more traditional theories 
which focus on the creation of the property, the personhood theory looks to 
the "subjective relationship between the holder and the thing." n236 Radin 
uses a wedding ring, a portrait, an heirloom, and a home n237 as examples 
of objects which may be bound up with personhood for particular 
individuals. n238 An indicium of a personality interest in property is a 
value to its owner that exceeds market value. n239

At the opposite end of the property spectrum from personhood property n240 
is fungible property: n241

Property that is "personal" in this philosophical sense is bound up with 
one's personhood, and is distinguishable from property that is held merely 
instrumentally or for investment and exchange and is therefore purely 
commercial or "fungible." One way to look at this distinction is to say 
that fungible property is fully commodified, or represents the ideal of the 
commodity form, whereas personal property is at least partially 
noncommodified. n242

By definition, the value of fungible property to its owner is its market 
value. Noncommodifiable property, by contrast, is property that is removed 
from the marketplace and is nonsalable. n243 A fungible property market 
regime can be useful because it allows dissimilar property rights to be 
commensurable. Radin theorizes, however, that certain property rights are 
incommensurable. Property rights at the fungible end of the spectrum may be 
overridden, while property rights at the personhood end of the spectrum may 
not. Thus, Radin suggests, "The more closely connected with 
personhood,  [*646]  the stronger the entitlement." n244

Radin does not propose that all property be inalienable and 
non-commodifiable. Rather, she stakes out a pluralist position somewhere on 
the broad continuum between Karl Marx and Richard Posner n245 which she 
calls "market-inalienability," where some property is fully commodified, 
some is noncommodified, and some is partially or incompletely commodified. 
n246 Incomplete commodification is designed to solve problems of "contested 
commodification" - property issues where there is active debate over the 
wisdom of either fully alienable or fully inalienable regimes. Radin 
identifies infants and children, fetal gestational services, blood, human 
organs, sexual services, and the services of college athletes as examples 
of contested commodification. n247 Employee preinventions, it will be 
demonstrated, also represent a problem of contested commodification.

3. Personhood and Inventorship

If pork bellies are fungible and wedding rings are personal, where do 
patent rights belong? Courts have recognized the peculiarly personal nature 
of patent rights:

The reluctance of courts to imply or infer an agreement by the employee to 
assign his patent is due to a recognition of the peculiar nature of the act 
of invention .... It is the result of an inventive act, the birth of an 
idea and its reduction to practice; the product of original thought .... n248

Commentators, too, have recognized the personality element of intellectual 
property. n249 The identification of an inventor with her creation is 
similar to that of the writer or the painter with her creation. n250 
Personality in these latter forms of intellectual property has long been 
recognized. n251 This Section will show that inventors have significant 
personality stakes in their inventions as well.  [*647]

According to Radin, the identification of an element of personality in 
property is merely the first step in determining whether that property 
ought to be treated as legally personal. The next step is to determine if 
the personal identification is "justifiable." Radin believes that 
person-thing relationships that facilitate an individual's understanding of 
"freedom, identity, and contextuality" n252 are justifiable personhood 
interests because they contribute to "our conception of human flourishing." 
n253 There is no formula for determining if a particular property interest 
is justifiably personal. We are left to "rely instead on our best moral 
judgment in light of the best conception of personhood as we now understand 
it." n254

Work is an example of incomplete commodification. We expect nonmonetary 
returns from our work, even though we demand payment in return for our 
services. n255 A person's relationship with her work facilitates an 
understanding of the three elements mentioned above that contribute to 
human flourishing: freedom, identity, and contextuality. n256 Preinventions 
are reified inventive work which implicate each of these three elements. 
"Freedom" refers to the autonomy aspect of personhood, the ability "to act 
for ourselves through free will in relation to  [*648]  the environment of 
things and other people." n257 "Identity" refers to individuation, which 
requires "the integrity and continuity of the self over time." n258 
Autonomy and individuation are, as mentioned earlier, common elements of 
any definition of personhood. "Contextuality," as that term is used by 
Professor Radin, combines elements of both autonomy and individuation. 
Contextuality refers to the development and constitution of the self 
through "relationships with the social and natural world." n259

An inventor's autonomy over her own inventiveness is diminished when 
another entity, her employer, holds the exclusive right to make, use, or 
sell her creative output. Some degree of control over one's own inventions 
is required to make possible, and protect, the constituting of autonomous 
personhood in inventive work. n260 An inventor's individuation is 
threatened when an employer can preclude an inventor from continuing to 
work with her creation even after she leaves the employment relationship. 
Some degree of inventive continuity is required to make possible, and 
protect, the constituting of individuating personhood in inventive work. 
n261 An inventor's self-development and self-conception through 
contextuality are impaired when her relationship with her inventions - her 
work - is determined not by her, but by her employer, n262 and when her 
work is monetized, alienated, and detached from her self n263 and from the 
"particulars" integral to her self. n264 Thus Professor Radin's personhood 
theory can provide useful insights for resolving preinvention assignment 
disputes.

One might ask why inventors should receive special treatment under 
personhood theory that other laborers do not enjoy. For example, as 
Professor James Boyle has noted in a somewhat different context, "We do not 
think it is necessary to give car workers residual property rights in the 
cars that they produce - wage labor is thought to work perfectly well." 
n265 The rebuttal, of course, is that the important distinction is not 
between "car workers" and inventors, but rather between the making 
of  [*649]  cars and the making of inventions. Cars are assembled according 
to precise specifications by the repetitious performance of assigned tasks. 
Inventions are "the fugitive fermentation of an individual brain." n266 It 
is justifiable and consistent with our notions of human flourishing for an 
inventor to embody her personality in her invention (or at least in certain 
of her inventions), even when she receives wages in return for her efforts. 
It is not justifiable for an autoworker to embody her personality in any 
one of the many identical automobiles upon which she labors. n267

The notion that patent rights are bound up with personhood is a familiar 
one to patent law. For example, under the Patent Code, applications must be 
made by human inventors, not their corporate assignees. n268 Furthermore, 
the application must include an oath by the human inventor. n269 Similarly, 
the remedies available in patent disputes indicate that the law views 
patents as a form of property imbued with a strong element of personality. 
In disputes over fungible property, damages are considered an adequate 
remedy; in patent disputes, however, equitable relief is the norm. n270 
More to the point, contracts for the assignment of patent rights are 
specifically enforceable, even though traditionally only contracts with 
strong personality elements have been specifically enforceable. n271  [*650]

It should be noted that at least one commentator, Justin Hughes, has 
cautioned against the application of personhood theory to inventions. n272 
Hughes articulates three specific concerns. First, it is difficult to 
determine reliable indicia of who does and does not have a personality 
stake in any particular invention. n273 Second, personality will be 
manifested to different degrees in particular inventions, and it is unclear 
whether different levels of personality call for different levels of 
protection. n274 Finally, different categories of inventions embody 
different levels of personality, which may (or may not) justify different 
levels of protection. n275 When each of these concerns is examined in terms 
of preinventions, however, none appears particularly problematic. n276

Patent law has a distinct advantage over many other forms of property law 
when identifying reliable indicia of personality: the inventor-entity must 
be identified on the patent application. The inventor as defined by current 
patent law is an underinclusive indicium of personality, however, because 
other entities, such as an assistant, may also have a personality stake in 
an invention. n277 This situation is a criticism of personality theory 
generally, however, rather than as applied to intellectual property. After 
all, any indicium of a personality stake in property can be underinclusive. 
For example, a mother may have a personality stake in her child's rental 
apartment if she visits regularly. The law recognizes the renter's 
interest, n278 just as the law should recognize the inventor's interest. In 
both cases, the indicia of personality (such as having one's name on the 
rental agreement or patent application, respectively) are reliable. The law 
generally does not recognize the mother's or the 
assistant's  [*651]  personality stakes because those indicia are less 
reliable. n279

As to Hughes' second objection, different inventions will indeed have 
different levels of personality invested in them, but this need not be 
reflected by different levels of protection under an intellectual property 
regime. Indeed, under current patent law, inventions that are more useful 
or that require more labor or more investment to create do not receive more 
protection. All inventions are treated alike once they meet the statutory 
thresholds of utility, novelty, and non-obviousness. n280

Hughes' last objection, in essence, asserts that inventions are simply not 
the repository for personality as are other forms of intellectual property, 
such as literature and music. n281 Few would dispute that Edison's light 
bulb expresses a lower quantum of personality than Tolstoy's Anna Karenina, 
and it is certainly the rare patent application that expresses the 
personality evident in an e.e. cummings poem. But this is not a valid 
comparison. First, inventions do reflect the personality of their inventor. 
The personality may not be apparent to those without expertise in the art, 
but practitioners can often identify the source of an invention merely by 
examining the engineering designs. n282 Engineers do not design by rote; 
some design decisions are made just because they "feel" right to the 
designer. Second, the inventor's personality is reflected in the process 
that led to the invention as much as in the invention itself. n283 Third 
and most importantly, the personality stake that should be protected is the 
extent to which both the process and the physical embodiment of the 
invention are constitutive of the inventor's personhood. n284 Thus, the 
important issue is how the inventor defines herself, not how society 
defines the inventor. n285 This need not be a wholly subjective test. As 
discussed  [*652]  above, reliable indicia can be established so that only 
reasonable, objectively justifiable personhood interests are protected.

A central premise of this Comment is that inventors have a strong 
personhood stake in their inventions and in the inventive process, or in 
the terminology used here, in inventions and preinventions. However, the 
identification of a personhood interest does not necessitate a rule of 
total inalienability for inventions and preinventions. n286 Furthermore, a 
given rule of market inalienability need not apply to both inventions and 
preinventions, nor for that matter to all inventions or all preinventions. 
Rather, I propose here to protect certain personhood interests only in 
employee preinventions. n287

I distinguish employee preinventions from other inventions and 
preinventions because the employee-inventor's "decision" to alienate her 
preinventions is particularly suspect. n288 First, the employee-inventor 
must decide to alienate her interests before she even conceives of the 
invention and before she has invested any personality. Second, the 
employee-inventor has no meaningful choice but to accept the terms offered 
by the employer if she wishes to develop her personhood by 
participating  [*653]  in the inventive process, given that large firms 
dominate access to necessary resources and opportunities. n289 Alienation 
of other inventions n290 and preinventions n291 shares at most one of these 
concerns and thus are not as suspect. Given the suspect nature of the 
decision to alienate preinventions, the remainder of this Comment will 
focus on identification of the personhood interests to be protected in the 
preinvention context and on how this protection might be implemented.

B. Non-Personal Inventions: Corporate Inventorship as a Consequence of 
Personhood Theory

As discussed above, patent law already recognizes the personhood interests 
of inventors in two ways: by requiring the identification of the human 
creators responsible for the invention on the patent application, and by 
notation of the inventor on the issued patent. This non-transferable, 
non-assignable, market-inalienable inventorship identification is a form of 
protection for a personhood interest - the association of the person with 
her invention.

This limited form of protection is both overbroad and underprotective, 
however. Inventorship identification is an overbroad form of personhood 
protection because it creates an irrebuttable presumption of justifiable 
investment of personhood. While this presumption is often 
accurate,  [*654]  there are instances where the corporate contribution so 
exceeds any individual contribution that investment of personhood in the 
invention or the inventive process is simply not justifiable. Inventorship 
identification is underprotective of personhood because, in instances where 
personality is implicated, inventorship identification alone leaves 
important personhood interests open to appropriation.

The remainder of this Comment proposes changes in the patent law designed 
to overcome its current shortcomings in protecting the personhood interests 
of employee-inventors. The overinclusiveness objection is addressed by 
arguing that there are really two classes of employee preinventions: those 
with and those without justifiable personhood interests. This Section will 
consider preinventions without justifiable personhood interests and will 
advocate recognition of corporate inventorship in those cases. The 
following Section will look at preinventions that do have justifiable 
personhood interests.

Although inventorship has become increasingly organizational and less 
independent during the twentieth century, patent law has largely ignored 
this shift. n292 Admittedly, some changes in the Patent Code have made it 
easier to obtain patents for team inventions. The Patent Act of 1952, for 
example, abolished the judicially imposed requirement that a patentable 
invention result from a flash of "inventive genius" n293 and replaced it 
with the current novelty, utility, and non-obviousness standards. n294 
These standards allow the results of methodical and organized corporate 
research to be patentable. n295 Similarly, the Patent Law Amendments of 
1984 n296 provided for an expanded concept of joint inventorship that is 
more in line with team invention in a corporate environment. n297 The 1984 
amendments modified the non-obviousness requirement n298 to reduce the risk 
that team inventions would be unpatentable  [*655]  due to the prior 
research efforts of team members. n299

These statutory changes and the gradual acknowledgment of team invention in 
the case law, n300 however, have been of only limited effect. At its core, 
patent law still clings to the concept of the "hero-inventor" and rejects 
the modern paradigm of "team-as-hero." Despite the deficiencies of the 
"team-as-hero" paradigm, the recognition of corporate inventorship would be 
a significant step toward modernizing patent law to reflect contemporary 
inventorship paradigms. n301

Corporate inventorship need not be a particularly radical step for patent 
law. n302 First, recognition of corporate inventorship would merely 
parallel developments in other areas of American intellectual property law, 
such as copyright n303 and mask work protection, n304 where 
"authorship"  [*656]  can be based on economic grounds as well as on the 
more traditional creation grounds. Furthermore, most foreign countries 
already recognize corporate inventors. n305

Second, the availability of corporate inventorship would not harm 
employee-inventors, since nearly all employee-inventors are already 
required to assign their patent rights to their employer. In fact, the 
availability of corporate inventorship could significantly help 
employee-inventors. Courts generally enforce questionable preinvention 
assignment agreements as a matter of policy. If corporate inventorship were 
available and a corporation did not qualify for inventor status, courts 
might be less likely to enforce adhesive contracts purporting to assign a 
patent to the corporation. n306

The question remains, however, as to when a corporation should qualify as 
an inventor. One model is provided by the "work for hire" doctrine of 
section 101 of the Copyright Act of 1976. n307 Section 101 defines two 
classes of works made for hire: works prepared by employee-inventors within 
the scope of their employment, and works specially ordered or commissioned 
for use as a contribution to a collective work. Another potential model, 
prescribed by the state statutes discussed earlier in Section II.D, would 
describe those employee-inventions that are not eligible for corporate 
inventorship. Thus, under a model suggested by the California statute, 
corporate inventions would be limited to those invented by 
employee-inventors during corporation time, or using corporation resources, 
or relating to present or anticipated areas of corporate business or 
research or development. n308

These models would probably provide too broad a scope for corporate 
inventorship, however, for both definitions of inventors would include 
virtually all employee inventions conceived at work. Many of these 
inventions would represent windfalls to the corporate employer if 
insignificant corporate resources had been expended and the corporation had 
not directed the activity leading to the invention. In other words, an 
invention that owes more to the initiative of the employee-inventor than to 
the resources and direction of the corporate employer should not qualify as 
a corporate invention. A better definition of corporate inventions would 
combine aspects of both of the models by limiting a corporate invention to 
an anticipated result of corporate direction n309 that was 
conceived  [*657]  and reduced to practice using significant corporate 
resources. All other patent applications would still require named human 
inventors.

This model of corporate inventorship should include a rebuttable 
presumption of individual inventorship by natural persons. If, for example, 
a corporation files a patent application claiming corporate inventorship, 
and one or more employee-inventors feel that the invention resulted 
primarily from their personal efforts, they could file an interference 
action with the Patent Office to determine inventorship. n310

If corporate inventorship were the only patent law modification made, 
however, little change would be reflected in the actual allocation of 
patent rights. Corporations would, of course, hold title to those patents 
for which the corporation was given inventorship credit, and through 
preinvention assignment agreements, corporations would obtain title to 
their employee-inventors' patents. What is needed to supplement this 
modification is a means to deal with bona fide personal inventions of 
employee-inventors.

C. Personal Preinventions: The Employee-Inventor and
the Personhood Defense

Thus far, this Comment has argued that employee preinventions are a form of 
partially noncommodifiable property. How should this idea affect the 
allocation of rights between employee-inventors and employers in inventions 
with justifiable personhood interests? This Section explores three possible 
methods of applying personhood theory to employee preinventions.

First, the law could recognize the justifiable personhood interests of 
employee-inventors in their preinventions and make these interests 
inalienable. This will be referred to as a "non-appropriability approach."

Second, the law could recognize corporate proprietary interests in the 
preinventions of employee-inventors analogous to human personhood 
interests. The corporate interest could either cancel the 
employee-inventor's  [*658]  personhood interest in the same property - 
thus making the property alienable - or be balanced against the interests 
of the employee-inventor on a case-by-case basis. This will be referred to 
as a "cancelling or balancing approach."

Finally, the law could reject corporate "personhood" interests and 
disaggregate the rights incidental to employee preinventions. Those 
interests that are justifiably constitutive of the personality of the 
employee-inventor could be identified and made market-inalienable. All 
other rights incidental to employee preinventions would then be freely 
alienable. This will be referred to as a "disaggregation approach."

1. A Non-Appropriability Approach

The non-appropriability approach suggests that employee preinventions 
should be non-assignable because they embody the personality of their 
inventor. Inventions, however, have both personal and non-personal 
attributes. A regime of complete inalienability of invention rights would 
be overprotective of personhood, since it would remove non-personhood 
interests from the market. Non-appropriability can be overinclusive, as 
well, if non-personal inventions are protected. Thus, a regime of total 
inalienability is difficult to imagine, let alone advocate, absent 
corporate inventorship for a significant percentage of the inventions of 
the employee-inventor.

Under a regime of total inalienability, employee preinventions could only 
be exploited by their original, human inventor, unless the employers 
obtained rights to the inventions via costly ex post negotiations. Such a 
regime would be far worse for corporations than a regime with no 
intellectual property protection at all, since corporations could be 
forbidden from exploiting the output of their own laboratories. Investment 
in organized research and development would likely be curtailed 
significantly. This negative consequence could be ameliorated, however, by 
permitting the gift-giving or sharing of the noncommodifiable property. 
n311 Thus, it might be possible under an inalienability regime for a group 
of researchers to work together, placing all patents received by any member 
into a common pool. n312 Such an approach, of course, would be more a 
cooperative arrangement than an employer-employee relationship. Moreover, 
if an invention were particularly valuable, the inventor would presumably 
be free of compulsion to place it in the pool, for such compulsion would 
alienate her personality. For this reason, the system would be unlikely to 
work in a corporate environment.

Another variation on the inalienability regime would be to 
make  [*659]  employee inventions inalienable but to grant employers 
non-transferable, non-exclusive shop-rights n313 to exploit the 
employee-inventor's preinvention. This would to some extent represent a 
return to the common law allocation scheme; however, the restrictions on 
alienability would preclude, at least for employee inventions, the patent 
licensing and transfer agreements that allow inventions to realize their 
optimal utility. Many firms might reduce expenditures on innovation under 
such a scheme.

Thus, it would seem that a regime of complete inalienability is not a 
desirable solution to the problem of the employee-inventor, even where 
schemes of gift-giving, corporate inventorship, and employer shop-rights 
are available to soften its impact. This conclusion, however, does not 
totally devalue the contribution personhood theory can make to solving the 
preinvention problem, if approaches can be developed that protect 
personhood interests without imposing complete inalienability.

2. A Cancelling or Balancing Approach

One alternative to the non-appropriability approach is a cancelling or 
balancing approach. This approach requires recognition that the corporation 
may have a justifiable personhood (or, analogously, proprietary) interest 
in the preinventions of employee-inventors. This interest would then either 
cancel the employee-inventor's personhood interest or be balanced against 
it. n314 A cancelling or balancing approach would juxtapose the individual 
personhood interests against corporate interests of a similar nature, and 
either the corporate interest could cancel the individual interest n315 or 
the two interests could somehow be balanced against each other. n316

Unfortunately, a cancelling or balancing approach that compares the 
personhood interests of humans and corporations has serious flaws. The 
assignment of a personhood interest to a corporate entity is incongruous 
with Professor Radin's conception of personhood, notwithstanding the status 
of legal personhood enjoyed by corporations. n317 Corporate personhood is 
generally acknowledged to be a mere legal fiction, utilized for reasons of 
economic efficiency n318 or convenient terminology. n319 
Personhood  [*660]  theories of property seek to protect the moral status 
or dignity of personhood, n320 rather than mere legal status. Legal 
corporate personhood is thus insufficient to bring corporate property into 
a regime of market-inalienability.

As noted earlier, n321 one indicium of a personhood interest in property is 
that its owner places a greater-than-market value on the property. While 
this is often a reliable indicium when applied to natural persons, it is 
entirely unreliable when applied to corporations. Corporate willingness to 
pay more than market value is simply an indication that the corporation is 
able to realize greater than market returns from the property. Such 
willingness is not a measure of the corporation's personhood or proprietary 
interest in the property, but rather an indication that market pricing may 
be flawed by such factors as imperfect information.

In the kingdom of corporate ends, everything has a price and nothing has a 
dignity. n322 Unlike some personhood interests of natural persons, it is 
difficult to come up with any examples of interests that are inalienable to 
corporations. n323 A person cannot sell her body parts, but a corporation 
can sell its divisions, or even the entire corporation. Corporations can 
even sell what might be argued is analogous to personality - the corporate 
"good will" - though in practice this might require the sale of the entire 
corporation. In the end, the concept of protecting the inalienable or 
noncommodifiable interests of firms is not supportable. Thus, the 
cancelling or balancing approach is unsatisfactory as a means of allocating 
rights in employee inventions.

3. A Disaggregation Approach

a. The Fungible/Personal Dichotomy

If corporations cannot have protectable personhood interests in property, 
can personhood theory provide a means of resolving preinvention disputes? I 
believe that it can - precisely because it distinguishes  [*661]  between 
corporations and individuals. The traditional property theories, discussed 
in Section III.B., failed to resolve preinvention assignment disputes 
because they could not distinguish between the employee-inventor and 
employer. The first approach discussed in this Section, the 
non-appropriability approach and its several variations, distinguishes 
employee-inventor from employer but seems to protect too much. The 
cancelling or balancing approach, like traditional property models, fails 
because it equates corporate and individual interests and does so 
imperfectly. The solution proposed here is to disaggregate the rights 
attaching to an invention, identifying and protecting those rights that 
have the most important personality consequences, while treating the others 
as alienable.

Disaggregation is a familiar - if not essential - concept in any scheme of 
intellectual property. In copyright, for example, books are conceptually 
disaggregated into the physical thing and the idea. The buyer gets the 
physical object when she purchases the book, but the author keeps the form 
of expression which embodies her personality. This aspect of the work - the 
author's expression - is protected by copyright. n324 The idea/expression 
dichotomy is codified in the Copyright Code. n325 Similar idea/embodiment 
and idea/layout dichotomies are familiar to patent law n326 and mask work 
protection, n327 respectively.

The key to allocating rights in employee preinventions under a personhood 
theory, then, is the establishment of a "fungible/personal" dichotomy. n328 
This is both consistent with personhood theory, which accommodates 
partially commodifiable goods, n329 and with intellectual property theory, 
which accommodates disaggregation of property rights in things. In fact, 
patent law already recognizes a fungible/personal dichotomy: credit for 
inventorship is seen as personal and therefore inalienable, while all other 
rights attaching to inventions are seen as fungible and therefore alienable.

Why aren't rights other than inventorship credit treated as 
personal?  [*662]  One possibility is that the rights are viewed from an 
external rather than internal perspective. At times, society identifies an 
inventor with her creation. Thus, creative credit is noncommodifiable. But 
as was stressed previously, n330 it is how the inventor identifies herself 
that is more significant. n331 For an inventor, this self-identification is 
done largely through the inventive process - through her work with the 
invention.

b. The Personhood or Inventor's Defense

Professor Radin's treatment of work provides guidance as to which of the 
inventor's interests should be protected: those that contribute to the 
inventor's self-conception in ways inseparable from the inventive process, 
those that contribute to her continuity in the inventive process, and those 
that contribute to her control over the inventive process. n332 Each of 
these interests can be protected by granting the inventor continued access 
to her invention independent of her employment relationship with the 
assignee. "Access" is used here in a fairly broad sense: the continuing 
ability to make use of the invention.

If an employee created an invention during the course of employment that 
was patented in the employee's name and assigned to the employer under a 
preinvention assignment agreement, the inventor could enjoy continuing 
access to the invention through the availability of an affirmative 
"personhood" or "inventor's" defense to patent infringement actions. The 
defense would be personal to the inventor and would protect only uses that 
were justifiably bound up with personhood. The personhood defense would 
have the effect of granting inventors a personal "reverse shop-right" in 
their inventions. n333 This reverse shop-right would permit 
employee-inventors to make, use, and sell their invention outside the 
employment relationship. This right would be inalienable. Thus, if an 
employee-inventor found that her employment relationship was not 
constitutive of personality vis-a-vis her invention, she would be free to 
leave the employer while continuing to exploit the invention on her 
own.  [*663]

The employer, for its part, would also be free to exploit the invention. 
Furthermore, the employer would be free to treat its interest in the 
invention as fungible - that is, it could assign, transfer, or license the 
invention to another - while the employee-inventor could not. Thus, the 
employer would not "lose" its investment in research under this proposal. 
Rather, the employer would get nearly the same rights as under current 
preinvention assignment agreement schemes, the only distinction being that 
the formerly exclusive rights would now not exclude the inventor herself.

Two additional elements would be needed to support the personhood defense. 
First, there must be some means of protecting ex-employee-inventors from 
the threat of vexatious litigation on the part of employers. By their very 
nature, personhood defense cases will tend to pit individuals and small 
entrepreneurial corporations against large established corporations. The 
threat of costly litigation would deter many individuals and small 
corporations, even those confident that their use was protected, from 
exploiting personal inventions. A rebuttable presumption of personal use, 
combined with a reduced threshold for imposing sanctions for frivolous or 
vexatious litigation on the part of employers, may help to reduce these 
potential problems. n334

Second, employers might try to contract around the personhood defense by 
requiring technical employees to sign long-term employment contracts or by 
utilizing noncompetition clauses in employment contracts. The personhood 
defense should be applied to breach-of-contract actions that attempt to 
prevent employee-inventors from using their inventions in ways that are 
constitutive of personhood, or that attempt to recover employee-inventor 
profits or employer losses from such uses.

c. Some Applications of the Personhood Defense and Comparisons to Current 
Doctrines

There are, of course, many uses for inventions. These cover the spectrum 
from the fully commodified to the fully personal. In order to be 
sufficiently protective of personhood, the defense would apply to those 
uses that contained a significant element of personality. The following 
examples indicate some of the activities to which the defense might apply. 
Each is compared with a current patent doctrine that does not adequately 
protect the personhood interests of inventors.

i. Private Personal Use

An inventor's private personal use of her invention for experimental 
purposes would be a protected use under the scheme outlined 
above.  [*664]  Such a use clearly contributes to the inventor's continuity 
and control over the inventive process and thus is constitutive of 
personhood. Thus, for example, the inventor would be free to use the 
invention for the purposes of developing a new invention. The inventor 
would be free to make any commercial use of the new invention and be immune 
to infringement charges for her commercially motivated use of the assigned 
invention. The use of the assigned invention can be deemed personal because 
it contributed to the continuity of the inventive process.

ii. As Compared to the Experimental Use Doctrine

Current patent law provides for an experimental use defense to infringement 
actions. n335 This judicially created defense is not limited to inventors 
and is unavailable if the experimental use is related to business or 
commercial purposes. n336 The experimental use defense is an overbroad form 
of personhood protection because even non-inventors may invoke it. n337 It 
is underprotective of personhood interests because it does not protect 
commercial uses that may be constitutive of an inventor's personhood. The 
personhood defense would expand the experimental use doctrine to allow any 
experimental use of the invention by the former employee-inventor, even if 
commercially motivated.

iii. Personal or Professional Commercial Exploitation

Even the inventor's direct commercial exploitation of the invention could 
be sufficiently personal to be immune from infringement under the 
personhood defense. n338 A direct commercial exploitation would be 
sufficiently personal if it were justifiably constitutive of the inventor's 
personhood, either personally or professionally. An example of a protected 
personal use would be the creation of a new invention dependent upon the 
original invention. An example of a protected professional use would be the 
commercial development of the invention. Thus, if the inventor were to 
found and manage a company for the purpose of exploiting the invention, 
this activity might be immune from charges of infringement. The founding of 
a company based upon one's inventive product can be justifiably 
constitutive of personhood. n339 However, not every 
professional  [*665]  involvement with the invention would be protected. 
For example, the mere subsequent employment of an inventor by someone other 
than the patentee would not ordinarily immunize the subsequent employer 
from liability for infringement.

iv. As Compared to the Assignor Estoppel Doctrine

The protection of personal or professional commercial exploitation as 
described above would help the courts resolve the particularly difficult 
problems they have had over the years with the doctrine of assignor 
estoppel. The judicially created doctrine of assignor estoppel precludes 
patent assignors, typically employee-inventors, from contesting the 
validity of patents that they have assigned, typically in infringement 
actions brought by their former employers. n340 Assignor estoppel has 
proved particularly problematic for the courts n341 because it represents a 
clash between the principles of contract and patent law. Justice Harlan 
expressed this conflict as follows:

On the one hand, the law of contracts forbids a purchaser to repudiate his 
promises simply because he later becomes dissatisfied with the bargain he 
has made. On the other hand, federal law requires that all ideas in general 
circulation be dedicated to the common good unless they are protected by a 
valid patent. n342

  [*666]  Proponents of assignor estoppel feel that the doctrine is 
necessary to protect employers' investment in research and development. 
n343 Opponents counter that the realities inherent in the bargaining 
process and the patent application procedure belie the assumption, implicit 
in the doctrine, that the employee-inventor has previously attested to the 
validity of the patent. n344

The debate over the question of assignor estoppel has been so heated 
because the stakes are so high and the options so poor. The 
employee-inventor has no good alternatives, particularly when her 
personhood interests are considered. Under assignor estoppel, she cannot 
develop her freedom, identity, and contextuality through continued access 
to her invention. Even if assignor estoppel is held inapplicable, she must 
either relinquish access (and thus, development of personhood) or diminish 
her personhood by asserting that her invention was not patentable. If the 
employee-inventor chooses the latter route and prevails, the invention 
enters the public domain and anyone, not just employer and 
employee-inventor, may practice it. In this case the employer indeed has 
little to show for its research and development investment.

Courts are asking the wrong questions in these cases. Rather than inquiring 
whether employee-inventors ought to be allowed to attack the patentability 
of their inventions, courts should consider whether employee-inventors can 
be divested of all interests in an invention through a preinvention 
assignment agreement. The personhood defense answers this question through 
a careful examination of the employee-inventor's relationship to the 
invention, rather than divorcing the invention from the creator by 
precluding the employee-inventor from even addressing the work's 
patentability. The personhood defense approach is preferable to the 
assignor estoppel approach because it is constitutive rather than 
destructive of an employee-inventor's personality. n345

V

Conclusion

This Comment has attempted to resolve a problem recognized for years but 
resistant to reform efforts: the allocation of rights to 
future  [*667]  inventions between employee-inventors and their corporate 
employers. It suggests the basis for a workable solution to this age-old 
problem: to treat the justifiable personhood interests of 
employee-inventors as market-inalienable and to make all other interests 
fully commodifiable. This proposed framework focuses on the nature of the 
property in dispute rather than on the relationship between the parties. It 
is based on a "hybrid" conception of invention that recognizes the 
contributions of both individuals and firms, rather than only the 
"hero-inventor" or "team-as-hero." It thus provides a more flexible means 
of protecting the interests of both employee-inventors and their corporate 
employers.

The proposed personhood approach has two primary policy implications. 
First, it recognizes the contributions of corporate employers where 
appropriate by allowing corporations to claim inventorship under the Patent 
Code when an invention is the anticipated result of corporate direction. 
Second, this approach protects the justifiable personality interests of 
employee-inventors in their inventions by providing a personhood defense to 
infringement actions. These two recommendations are complementary: some 
employee-inventors will reap increased rights in their inventions, but many 
inventions will remain in the corporate name, beyond exploitation by 
employee-inventors.

The personhood approach suggested here is consistent with the distinctive 
nature of intellectual property discussed earlier. Intellectual property 
has both "free good" and "public good" attributes. n346 The "free good" 
attribute allows the employee-inventor and employer to exploit the 
invention simultaneously without depriving either party of its use or 
enjoyment; the "public good" attribute necessitates that the personhood 
defense be personal to the inventor and non-transferable. This 
circumscribed exception to the employer-inventor's exclusive patent rights 
will continue to exclude free-riders who do not contribute significantly to 
the production of the invention.

Intellectual property rights are also of limited scope and duration. n347 
They protect only certain of the "bundle of rights" associated with 
tangible property. Consequently, the disaggregation of interests in 
inventions and the reduction in the scope of the employer's right to 
exclude personal and commercial uses by the employee-inventor do not 
undercut the integrity of the intellectual property protection.

Finally, intellectual property has traditionally been thought of as a 
"democratic" form of property. n348 The retention of residual rights by 
individual employee-inventors will tend to be wealth-redistributive. It 
will cause some - though, in all likelihood, relatively little - shift 
of  [*668]  wealth from corporations to individuals. It will to some extent 
empower individual employee-inventors to compete against large corporations.

The personhood approach supplements the traditional theoretical property 
justifications discussed earlier in Section III.B. Under traditional 
theories, both employee-inventors and employers can articulate persuasive 
arguments for intellectual property protection. These theories cannot, 
however, adequately distinguish between the claims of employee-inventors 
and employers, and personhood theory provides a useful tool for allocating 
rights in a reasoned, justifiable manner.

Ultimately, of course, employee-inventors are perfectly capable of acting 
to protect their personhood interests themselves, either by becoming 
independent inventors or by becoming non-inventors. They may move to other 
fields of work where their personhood interests are less likely to be 
appropriated by firms or where individual activity is more practicable. 
n349 However, their departure can turn into a serious resource allocation 
problem for society. In a perverse way, then, current patent and contract 
doctrine may be reducing rather than enhancing social welfare.

Because the control of ideas confers substantial benefits on inventors, 
intellectual property structures are likely to arise in any social system 
containing self-interested actors. Even without governmental assistance, 
individual innovators will do their utmost to create a regime that rewards 
creativity; the only question is whether the results will be better or 
worse than the governmental alternative. n350



Although this Comment has emphasized normative rather than instrumental 
concerns, the normative problems with preinvention assignments do not exist 
in an instrumental vacuum. America's declining productivity growth, n351 
rate of innovation, n352 and supply of engineers and scientists n353 have 
been the cause of great concern in recent years. n354  [*669]  Perhaps the 
alienation (in every sense) of the American technologist is, in some part, 
to blame.

FOOTNOTES:
n1. Ralph W. Emerson, lecture, quoted in The Penguin Dictionary of 
Quotations 155 (J.M. Cohen & M.J. Cohen eds., 1977).

n2. A preinvention assignment agreement is a clause of an employment 
contract that obligates the employee to assign to the employer all 
interests in any future inventions conceived during (and in some cases, 
before and after) the employment term.

n3. Unless otherwise stated, "invention" is used in this Comment as 
shorthand for patentable invention or discovery.

n4. The phrase "employee-inventors" is used in this Comment to indicate 
that the individual is employed (by another individual, a corporation, a 
government, or others), not to indicate the type of employment (that is, 
employed as an inventor).

n5. 6 Donald S. Chisum, Patents: A Treatise on the Law of Patentability, 
Validity, and Infringement 22.03, at 22-8.1 (1992).

n6. For examples of judicial decisions concerning the allocation of rights 
between employee-inventors and employers, see infra notes 93-124 and 
accompanying text. A partial list of commentary on the subject includes 
Robert L. Gullette, Fact or Fiction: Legislative Control of 
Employer-Employee Ownership Rights in Inventions and Other Intellectual 
Property, 1985 Pat. L. Ann. 7-1; Christopher M. Mislow, Necessity May Be 
the Mother of Invention, but Who Gets Custody? The Ownership of 
Intellectual Property Created by an Employed Inventor, 1 Computer & 
High-Tech. L.J. 59 (1985); Arthur Nobile, Experiences with Industrial 
Patent Policy, in Patent Policy: Government, Academic, and Industry 
Concepts 156 (Willard Marcy ed., 1978) hereinafter Patent Policy; John P. 
Sutton, The Inventor's Interest, in Patent Policy, supra, at 150; Paul C. 
Van Slyke & Mark M. Friedman, Employer's Rights to Inventions and Patents 
of Its Officers, Directors and Employees, 18 Am. Intell. Prop. L. Ass'n 
Q.J. 127 (1990); Richard C. Witte & Eric W. Guttag, Employee Inventions, 71 
J. Pat. & Trademark Off. Soc'y 467 (1989); Arvid V. Zuber, Impact of Patent 
Policies on Creativity in Industrial Research Laboratories, in Patent 
Policy, supra, at 145; Jay Dratler, Jr., Note, Incentives for People: The 
Forgotten Purpose of the Patent System, 16 Harv. J. on Legis. 129 (1979); 
Lucy Gamon, Note, Patent Law in the Context of Corporate Research, 8 J. 
Corp. L. 497 (1983); William P. Hovell, Note, Patent Ownership: An 
Employer's Rights to His Employee's Invention, 58 Notre Dame L. Rev. 863 
(1983); Henrik D. Parker, Note, Reform for Rights of Employed Inventors, 57 
S. Cal. L. Rev. 603 (1984); Thomas C. Siekman, Comment, Employer's and 
Employee's Rights in Patents Arising from the Employment, 11 Vill. L. Rev. 
823 (1966). For a discussion of legislative treatment of this area, see 
infra Section II.D.

n7. The employee typically receives a token payment in exchange for the 
assignment. Some firms may make more than a token payment, however, perhaps 
even a percentage of the value of the invention or of the royalties 
accruing from the invention. It will generally be assumed here that any 
consideration received by the employee in return for her promise to assign 
future inventions to her employer is either nominal or substantially less 
than the value of the inventions. Thus, the arguments put forward here are 
independent of consideration. For a discussion of consideration in the 
context of preinvention assignment agreements, see infra notes 124-30 and 
accompanying text.

n8. See infra notes 106-07 and accompanying text. Some states do impose 
statutory limits on the scope of such agreements, however. See infra notes 
note 136-37 and accompanying text.

n9. 35 U.S.C. 1-376 (1988 & Supp. II 1990).

n10. The phrase "inventor-entity" is used in this Comment to refer to the 
combination of employee-inventor and employer.

n11. The very nature of bargaining for nonexistent inventions tends to 
favor the employer. See infra note 126 and accompanying text.

n12. The positive law of preinvention assignment agreements is fairly well 
settled; such agreements are valid and enforceable. See infra note 106 and 
accompanying text.

n13. This is how Judge Harry Edwards defines a "hard" case. See Harry T. 
Edwards, The Growing Disjunction Between Legal Education and the Legal 
Profession, 91 Mich. L. Rev. 34, 44 (1992).

n14. The employer will generally be assumed to be a corporation. At some 
points in this Comment, the corporate status of the employer is an explicit 
and important part of the discussion. For the most part, however, terms 
such as "employer," "corporation," and "firm" will be used interchangeably.

n15. By most estimates, 80% to 90% of all patentable inventions are the 
product of employee-inventors. See, e.g., Ingersoll Rand Co. v. Ciavatta, 
542 A.2d 879, 886 (N.J. 1988); A. Samuel Oddi, Beyond Obviousness: 
Invention Protection in the Twenty-First Century, 38 Am. U. L. Rev. 1097, 
1136 n.219 (1989); Parker, supra note 6, at 604.

n16. U.S. Const. art. I, 8, cl. 8.

n17. See, e.g., Goldstein v. California, 412 U.S. 546, 561 (1973) 
(describing the constitutional meaning of "author" as " "originator,' "he 
to whom anything owes its origin' " and of "writings" as "any physical 
rendering of the fruits of creative intellectual or aesthetic labor") 
(quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884)); 
see also Feist Publications, Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 
1288 (1991) (discussing the constitutional meanings of "author" and 
"writings"); Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 
(1989) ("As a general rule, the author is the party who actually creates 
the work, that is, the person who translates an idea into a fixed, tangible 
expression entitled to copyright protection.").

n18. See Donald S. Chisum, The Patentability of Algorithms, 47 U. Pitt. L. 
Rev. 959, 1013 (1986) (noting paucity of Supreme Court rulings on meaning 
of inventorship).

n19. See, e.g., Whitely v. Swayne, 74 U.S. (7 Wall.) 685, 687 (1868) ("He 
is the first inventor, and entitled to the patent, who, being an original 
discoverer, has first perfected and adapted the invention to actual use.").

n20. William B. Bennett, The American Patent System: An Economic 
Interpretation 27 (1943).

n21. 35 U.S.C. 101 (1988).

n22. Id.

n23. Id. 102.

n24. Id. 103.

n25. See, e.g., Jay Dratler, Jr., Intellectual Property Law: Commercial, 
Creative, and Industrial Property 2.02 (1991).

n26. Id.

n27. 35 U.S.C. 154 (1988).

n28. Fourteen years for a design patent, id. 173, and 17 years for a 
utility or process patent, id. 154.

n29. As will be discussed infra Section III.B, the right of an inventor to 
practice her own invention is based on common law rather than statute.

n30. For example, inventor A's valid patent for a self-cleaning bathtub may 
be blocked by inventor B's basic bathtub patent.

n31. See 35 U.S.C. 115 (1988) (requiring that the "applicant shall make 
oath that he believes himself to be the original and first inventor of the 
invention for which he solicits a patent," a requirement that no corporate 
person could fulfill); 6 Chisum, supra note 5, 22.01; Van Slyke & Friedman, 
supra note 6, at 128 n.2; Dratler, supra note 6, at 141. Despite the common 
designation of the corporate entity as a "legal person," the rights 
accorded to corporations are limited in areas of the law beyond property. 
For example, a corporation is not a citizen, is not protected by the 
liberty provision of the Fourteenth Amendment, may not assert a right 
against self-incrimination, and is not protected by the Privileges and 
Immunities Clause of the Constitution. See Note, Constitutional Rights of 
the Corporate Person, 91 Yale L.J. 1641, 1644 (1982).

n32. This is especially surprising in light of the fact that patent law may 
be unique among forms of American intellectual property in this preclusion 
of "creatorship" by the corporate entity. The Copyright Code, for example, 
provides that the "employer or other person for whom a work was prepared is 
considered the author" of such work. 17 U.S.C. 101, 201(b) (1988 & Supp. 
III 1991). But the scope of copyright protection for corporate authors is 
not precisely the same in all respects as for human authors. For example, 
due to the theoretically infinite lifetime of corporations, copyright 
protection for works made for hire "endures for a term of seventy-five 
years from the year of its first publication, or a term of one hundred 
years from the year of its creation, whichever expires first" rather than 
the "life of the author and fifty years" duration of protection for works 
of human authorship. Id. 302(a), (c).

Similarly, the Semiconductor Chip Protection Act of 1984 SCPA, a sui 
generis form of intellectual property protection for mask works fixed in 
semiconductor chip products provides authorship rights to financing 
entities. See id. 901(6), 902. The "human inventor" requirement in the 
Patent Code may be explained by the higher threshold of originality and 
novelty needed for protection under this Code than under the Copyright Code 
or the SCPA. Note that while the Patent Code does not recognize corporate 
inventors, it does recognize that an invention may be the result of a 
collaborative effort among several humans. See 35 U.S.C. 116 (1988) 
(providing for joint inventorship). The question of corporate inventorship 
is explored further infra Section IV.B.

n33. The procedural requirements of a patent application include the 
identification of the inventor and the performance of certain acts by the 
inventor. See, e.g., 35 U.S.C. 115 (1988) (requiring the oath of the 
inventor); id. 111 (requiring a written application).

n34. "Power" is used in the Hohfeldian sense that the holder of a power can 
alter the legal position of either herself or another. In Hohfeldian terms, 
non-inventors have a "liability" with respect to inventions: they are 
susceptible to having their legal position altered. See Wesley N. Hohfeld, 
Fundamental Legal Conceptions as Applied in Judicial Reasoning 7, 50-60 
(Walter W. Cook ed., 1923); see also Stephen R. Munzer, A Theory of 
Property 18-19 (1990) (discussing Hohfeld's "power/liability" legal 
conception).

n35. See James O. Grunebaum, Private Ownership 4 (1987) ("Ownership in 
general is a right constituted relationship, or set of relationships, 
between persons with respect to things."). Again, "right" is used in the 
Hohfeldian sense of entailing a duty in others, here the duty to refrain 
from making, using, or selling the subject matter of the patent for a 
period of 17 years after the patent issues. See Hohfeld, supra note 34, at 
6-7, 36-38; see also Munzer, supra note 34, at 18 (discussing Hohfeld's 
"right/duty" correlative relationship).

n36. 35 U.S.C. 261 (1988).

n37. Id.

n38. Id. 152.

n39. See Dorsey Harvester Revolving-Rake Co. v. Marsh, 7 F. Cas. 939, 942 
(C.C.E.D. Pa. 1873) (No. 4,014) ("The right to acquire and hold patents is 
here clearly given to corporations ....").

n40. The phrase is borrowed from Robert B. Reich, Entrepreneurship 
Reconsidered: The Team as Hero, Harv. Bus. Rev., May-June 1987, at 77 
(arguing that American industry must strive for a model of collective 
entrepreneurship, as portrayed in Tracy Kidder's portrayal of the computer 
industry, The Soul of a New Machine, rather than the old model of "heroes 
and drones").

n41. Interesting biographies of these hero-inventors include: Robert V. 
Bruce, Bell: Alexander Graham Bell and the Conquest of Solitude (1973); 
Constance McL. Green, Eli Whitney and the Birth of American Technology 
(1956); and Working at Inventing: Thomas A. Edison and the Menlo Park 
Experience (William S. Pretzer ed., 1989) hereinafter Working at Inventing.

For a description of hero-inventors generally, see Roger Burlingame, 
Inventors Behind the Inventor 3 (1947):

When you say the word inventor to most Americans, a lot of pictures jump 
suddenly into their minds. They see Samuel Morse with his great white beard 
and his chest covered with medals standing by a telegraph key, ticking off 
the message "What Hath God Wrought." They see Robert Fulton watching his 
awkward little steamboat with great clouds of black smoke pouring out of 
it, crawling up the Hudson. They see Eli Whitney grinding away at his 
cotton gin and they see Edison standing stiffly by a large incandescent 
bulb, considerably bored by the crowd of admirers round him. Some Americans 
even see Henry Ford watching his cars roll twenty seconds apart off his 
assembly line at River Rouge.

These are all pictures of popular Americans heroes. There is a regular 
parade of them before your mind's eye whenever anyone says the word inventor.

This "regular parade" of familiar images does not accurately reflect the 
diversity of early American or, for that matter, contemporary American 
inventors. For a discussion of the contributions of women inventors, see 
Anne L. Macdonald, Feminine Ingenuity: Women and Invention in America 
(1992). For a discussion of the contributions of African-American 
inventors, see Portia P. James, The Real McCoy: African-American Invention 
and Innovation, 1619-1930 (1989).

n42. See Burlingame, supra note 41, at 4 ("The old-time inventor hero is no 
longer there when you go to look for him."); Macdonald, supra note 41, at 
333 (noting that during the course of the 20th century, "women inventors 
had apparently ceased to be the heroines they once had been to their 
sisters."). There are well-known technologists, to be sure, but to a large 
extent the "hero-inventor" has been supplanted in popular folklore by the 
"hero-entrepreneur." Individuals such as Steven Jobs (Apple Computer and 
Next, Inc.), Bill Gates (Microsoft), and other well-known "technologists" 
are really famous for their business exploits rather than for any personal 
technological achievements. See, e.g., Kenneth A. Brown, Inventors at Work 
219 (1988). Brown notes, in an introduction his to interview with Steven 
Wozniak, designer of the Apple II personal computer, that "Wozniak was the 
thinker behind Apple Computer; Jobs was the driver. While Wozniak designed 
computers, Jobs set about marketing them." Id.

n43. For example, technological "advances" are more often seen as a mixed 
blessing today than in the past. See, e.g., Samuel C. Florman, The 
Existential Pleasures of Engineering 45 (1976) (describing the 
anti-technology movement of the 1960s and '70s that held "technology to be 
the root of all evil").

n44. This Section relies in large part on John Jewkes et al., The Sources 
of Invention (1958). Written in 1958 and revised and enlarged in 1969, this 
thoughtful essay remains a fruitful starting point for any study on the 
nature of invention and innovation.

n45. The term "inventorship paradigm" here refers to the nature of the 
inventor-entity and has nothing to do with the subject matter, theory, 
technology, or techniques of the underlying invention. The term is used to 
refer to typical or representative descriptions of who or what invents, 
both individually and within organizations. Thus, inventorship paradigms 
describe inventor-entity organizational structures and interactions, or 
invention environments.

Inventorship paradigms are to be distinguished from scientific paradigms as 
that term is used by Thomas S. Kuhn in his influential essay, The Structure 
of Scientific Revolutions. Kuhn uses the term "scientific paradigm" to 
refer to an unprecedented achievement that establishes a school of 
scientific thought. Thus, Newtonian dynamics and Copernican astronomy are 
examples of scientific paradigms. Thomas S. Kuhn, The Structure of 
Scientific Revolutions 10 (2d ed. enlarged 1970).

Inventorship paradigms can be used both as an attempt to describe and 
catalog inventor-entities (and thus have the attributes of "model") and as 
a description of the public (or judicial or legislative) perception of 
inventor-entities (and thus have the attributes of "metaphor").

n46. George E. Folk, Patents and Industrial Progress 144 (1942); see also 
Sutton, supra note 6, at 150 ("In 1790, when the first patent act was 
passed, there was no middle man between Government and Inventors. The 
inventor disclosed his invention in return for the right to exclude others 
for limited times.").

n47. See supra text accompanying note 1.

n48. See E. Burke Inlow, The Patent Grant 37 (1950) (describing the 18th 
century in America as the "age of home industry").

n49. For a detailed discussion of Eli Whitney and his invention of the 
cotton gin, see Green, supra note 41.

n50. In fact, Whitney studied at Yale with the eventual goal of practicing 
law:

In the late eighteenth century ... Yale was still primarily a training 
school for the pulpit, for the teacher's rostrum, for the bar and thence 
for posts of public responsibility. To attend college as preparation for an 
inventor's or manufacturer's career would have seemed a bizarre notion to 
the men of the time. Whitney himself had no such thought.

Id. at 29.

n51. Id. at 45-46. For a quite different account of the invention of the 
cotton gin, attributing significant inventive credit to Whitney's South 
Carolina hostess, Catherine Greene, see Macdonald, supra note 41, at 
xx-xxiv. Macdonald relates several versions of the invention, including the 
following:

When the cotton clogged the wooden teeth of Whitney's model, Greene 
remarked laughingly, "What! Allow such a trifle as that worry you? Trust to 
a woman's wit to find the cure," seized the wire hearth-brush, and 
suggested to Whitney that he use it to comb through the cotton. Whitney 
gallantly replied, "Thank you for the hint. I think I have it now," and 
repaired to his workshop where he eventually developed the machine he 
patented - the one with wire teeth.

Id. at xxi. But see Green, supra note 41, at 48 (discounting the 
contribution of Catherine Greene).

n52. Green, supra note 41, at 48.

n53. There were, for example, only seven joint-stock companies and 
corporations in existence in 1780. Inlow, supra note 48, at 37.

n54. See, e.g., Brown, supra note 42 (containing interviews with several 
prolific independent inventors); Edmund L. Andrews, Rich in the 90's on 
Ideas Hatched in the 50's, N.Y. Times, Nov. 13, 1992, at A1 (describing 
Jerome Lemelson, an independent inventor who has obtained nearly 500 
patents); Carlos V. Greth, Technical Tinkerers, Chi. Trib., Nov. 18, 1990, 
at C6 (describing the work of independent inventors); Robert Kanigel, One 
Man's Mousetraps, N.Y. Times, May 17, 1987, 6 (Magazine), at 48 (same).

n55. This trend reflects the transformation of American society during the 
same period from individualist to organizational. See, e.g., Meir 
Dan-Cohen, Rights, Persons, and Organizations: A Legal Theory for 
Bureaucratic Society 13 (1986) ("In the early nineteenth century, four out 
of five Americans were self-employed; the number is now less than one in 
ten." Id. at 212 n.3) (quoting Charles Lindblom, Politics and Markets 28 
(1977)); Paul Israel, From Machine Shop to Industrial Laboratory: 
Telegraphy and the Changing Context of American Invention, 1870-1920, at 
151 (1992) (noting that changes in the post-Civil War telegraph industry 
"reflected a general transformation taking place in American society, as 
economic and political power began to shift from individuals to large-scale 
bureaucratic organizations").

n56. See, e.g., Israel, supra note 55, at 121-51.

n57. Id.

n58. Id. at 130.

n59. See, e.g., Thomas P. Hughes, Thomas Alva Edison and the Rise of 
Electricity, in Technology in America: A History of Individuals and Ideas 
117, 119 (Carroll W. Pursell, Jr. ed., 1990) hereinafter Technology in 
America; David A. Hounshell, The Modernity of Menlo Park, in Working at 
Inventing, supra note 41, at 116 (characterizing Edison's laboratory as the 
model for 20th-century research and development facilities). Edison was a 
"hero-inventor" who fully understood the value of the "team-as-hero" and 
thus embodied both paradigms. See, e.g., Paul Israel, Telegraphy and 
Edison's Invention Factory, in Working at Inventing, supra note 41, at 66. 
In many ways, Edison's story is

the story of a change in America; the story of how all work and effort from 
being separate, free, individual, disjointed, became organized and 
coordinated until finally, the team replaced the lone wolf in almost every 
department of life and work including technological invention. Perhaps the 
most curious aspect of the whole story is Edison's part in this change. 
For, after his wandering career as one of the most rugged individuals in 
the history of invention, he became the pioneer of its collectivization; 
the first American to apply teamwork to a pursuit which, above all others, 
was traditionally the property of lonely investigators living in garrets 
and carrying on their researches by the light of a candle shining dimly 
through cobwebs.

Burlingame, supra note 41, at 178.

n60. Reese V. Jenkins, George Eastman and the Coming of Industrial Research 
in America, in Technology in America, supra note 59, at 129.

n61. Id.

n62. Some of the reasons include: the growth of monopolies and 
conglomerates which collected the capital and human resources necessary for 
the establishment of corporate laboratories, see, e.g., Burlingame, supra 
note 41, at 193-94; William S. Pretzer, Introduction: The Meanings of the 
Two Menlo Parks, in Working at Inventing, supra note 41, at 12, 17 (noting 
that Edison received funding for the Menlo Park laboratory from Western 
Union, "one of the great American monopolies"); the great need for 
invention created by the growth of the country and the development of new 
technologies, see, e.g., Burlingame, supra note 41, at 194-95; the parallel 
development of corporate and academic research in Europe, see, e.g., 
Israel, supra note 59, at 83; Jenkins, supra note 60, at 136-38; and the 
growing availability of academically trained scientists and engineers, see, 
e.g., Jenkins, supra note 60, at 141.

n63. Jewkes et al., supra note 44, at 182. The combination of these 
functions within the firm was intended to further the following goals:

First, to gather together more of the resources incidental to research, to 
provide the research worker with the best aids, devices and working 
conditions; second, to encourage co-operation between different minds, and 
third, to try to give some guidance about the kind of inventions which 
would be most useful to the firm.

Id. at 132. As Jewkes points out, while the first goal is attainable in 
industrial laboratories, the latter two are far more elusive. Id. at 
133-34. Perhaps more to the point, the latter two goals are really aimed at 
innovation rather than invention.

n64. Thomas M. Jorde & David J. Teece, Innovation, Cooperation and 
Antitrust, 4 High Tech. L.J. 1, 5 (1989).

n65. Not all discoveries are inventions, of course. For a definition of 
"invention," see supra notes 3, 21-26 and accompanying text.

n66. Jorde & Teece, supra note 64, at 5.

n67. Id.

n68. Michael Schrage, Innovation and Applied Failure, Harv. Bus. Rev., 
Nov.-Dec. 1989, at 42, 43.

n69. These distractions include the provision of "atmosphere, background 
information, direction and resources in terms of space, heat, light, 
equipment, time, supporting services, salary and in many cases the 
identification of the problem to be solved." H. Fredrick Hamann, Invention 
in the Corporate Environment, 1 Am. Pat. L. Ann. Q.J. 102, 106 (1972).

n70. Edison himself was one of the first "professional inventors." See 
Burlingame, supra note 41, at 190-91.

n71. It would be overly simplistic to characterize 18th-century invention 
as "empirical" (that is, somewhat accidental or not based on prior 
scientific knowledge) and 20th-century invention as "scientific." There is 
some truth, however, in Jewkes' characterization of "an earlier heroic age 
of clumsy individual pioneering and a modern age in which highly trained, 
closely organised teams of technologists, fortified by an easily accessible 
and constantly expanding body of scientific knowledge, move forward with 
deliberation to results which can largely be predetermined." Jewkes et al., 
supra note 44, at 32; see also Newton H. Copp & Andrew W. Zanella, 
Discovery, Innovation, and Risk 5-9 (1993) (contrasting the trial-and-error 
approach to technology taken in the 18th and early 19th centuries to the 
more systematic and scientific approach taken in the late 19th and 20th 
centuries).

n72. See, e.g., Copp & Zanella, supra note 71, at 5 (noting how the 
relationship between engineering and the natural sciences has grown notably 
closer over the past 100 to 150 years); Edwin T. Layton, Jr., The Revolt of 
the Engineers: Social Responsibility and the American Engineering 
Profession 38 (1986) ("The professionalization of engineering was 
everywhere associated with the shift from a craft to a scientific base for 
the underlying technology ...."); Bruce Sinclair, Thomas P. Jones and the 
Evolution of Technical Education, in Technology in America, supra note 59, 
at 62-70 (describing the development of scientifically oriented technical 
education in America). The difference between science and engineering has 
been expressed in the following terms: "Scientists seek general patterns in 
nature that can be summarized in models and theories. ... Engineers have 
come to use much of the methodology of science, but the nature of the 
questions differ from science as engineers seek better machines, 
structures, systems, chemicals, or processes." Copp & Zanella, supra note 
71, at 5.

n73. S.C. Hollister, The Inventor's Contribution to Engineering Progress, 
in United States Patent Law Sesquicentennial Celebration 5, 7 (U.S. Patent 
Office, Dep't of Commerce ed., 1941).

n74. Routinized invention may have a certain attraction to firms seeking 
specific results or maintenance of the status quo. But routinized invention 
may not be in the best interests of society, which benefits most from 
revolutionary inventions. One commentator has described routinized 
invention thus:

Unfortunately, there is a trade-off involved in industrial laboratories.... 
The director of ... a leading German chemical manufacturer, decided that 
industrial laboratories routinized invention. He characterized the 
inventions of industrial research laboratories as establishment or 
institutional inventions that had von Gedankenblitz keine Spur (no trace of 
a flash of genius).

Schrage, supra note 68, at 43 (third alteration in original). In the 
terminology of Thomas Kuhn, industrial laboratories do not produce 
invention paradigms, but rather "normal invention" (that is, they work 
within established paradigms). See Kuhn, supra note 45, at 10-34; see also 
Floyd L. Vaughan, The United States Patent System: Legal and Economic 
Conflicts in American Patent History 276 (1956) ("In spite of, and partly 
because of, these alleged advantages of industrial laboratories, the 
employed inventor seldom brings forth a great invention, although he and 
his fellow-employees are very effective in developing and improving the 
inventions of others ....").

n75. It is also debatable whether technical training (or current levels of 
technical training) is even desirable as a means of fostering invention. 
See, e.g., Burlingame, supra note 41, at 182 (noting that the famous radio 
inventor Edward Howard Armstrong believed that too much scientific 
schooling may hinder an inventor).

n76. There are, of course, exceptions to this rule. For example, some 
corporations with hierarchical technician (non-degreed) and engineer 
(degreed) job classifications occasionally permit exceptionally talented or 
experienced technicians to jump to the engineer classification.

n77. For example, formally trained engineers tend to be theoretical 
inventors rather than experimental inventors. See, e.g., Burlingame, supra 
note 41, at 180-83.

n78. Professionalization has made it more difficult for those who do not 
meet the preconceived corporate profile of "inventor" to obtain access to 
and positions of responsibility in research facilities. In 1957, for 
example, then-director of RCA Patent Operations, Clarence Tuska, an 
"admittedly "old-fashioned' man," pointed out that the "Lord intended women 
to be mothers rather than inventors." Macdonald, supra note 41, at 334. 
Many lab directors today doubtless share Mr. Tuska's sentiments. For a 
discussion of the historical and continuing structural barriers faced by 
women in engineering and the physical sciences, see Shirley M. Tilghman, 
Science vs. the Female Scientist, N.Y. Times, Jan. 25, 1993, at A11 (noting 
that women earn just seven percent of new engineering doctorates and that 
little progress has been made on this front in the last 50 years). See also 
Deborah L. Rhode, Perspectives on Professional Women, 40 Stan. L. Rev. 1163 
(1988) (discussing women in the professions generally, including engineering).

n79. See, e.g., James, supra note 41, at 15:

As technology became more complicated, inventors in emerging fields began 
to have more formal education. Advanced degrees in engineering and the 
sciences were necessary to participate in these new technologies. Blacks 
found it difficult to get access to higher education and also found it 
difficult to obtain research staff positions.

See also id. at 95-96 (describing how African-American men and women have 
historically found it difficult to obtain the requisite degrees for 
corporate technical employment and to overcome the reluctance of 
corporations to employ them).

n80. Jewkes et al., supra note 44, at 126. The professionalization of 
invention may thus have brought about an ironic result: fewer people enter 
the profession, resulting in fewer inventors and hence, fewer inventions. 
Prospective inventors are all but required to invest human and financial 
capital in technical education, driving most to careers in industrial 
laboratories. But careers as corporate inventors have limited upside 
potential because the corporation has appropriated most of the upside. This 
limited potential in turn deters potential inventors from investing in 
technical education (or at least eliminates the incentive for investing in 
technical education which the patent system should in theory provide). 
Worse yet, those who have already invested in the education and have worked 
in the industrial laboratories may decide to leave the profession because 
of the inability to realize significant gain on their inventions.

n81. Smith admiringly described the mass production of pins as follows:

One man draws out the wire, another straights it, a third cuts it, a fourth 
points it, a fifth grinds it at the top for receiving the head, to make the 
head requires two or three distinct operations; to put it on is a peculiar 
business, to whiten the pins is another; it is even a trade by itself to 
put them into the paper; and the important business of making a pin is, in 
this manner, divided into about eighteen distinct operations, which, in 
some manufactories, are all performed by distinct hands ....

1 Adam Smith, An Inquiry into the Nature and Causes of the Wealth of 
Nations 6 (James E.T. Rogers ed., 2d ed., Oxford, Clarendon Press 1880) 
(1776).

n82. See Jewkes et al., supra note 44, at 238 ("The underlying principle, 
rarely formulated precisely but ever present, has been that originality can 
be organized ... that mass production will produce originality just as it 
can produce sausages."). Jewkes relates the story of a corporate executive 
who, upon hearing an estimate that a certain piece of research would 
require six men for two years, instructed the director of research to put 
12 men on the job for one year. Id. at 137 n.1.

n83. Id. at 132 (noting that "the industrial laboratory does not appear to 
be a favorable environment for inducing invention"); id. at 185 (asserting 
that "the large research organizations of industrial corporations have not 
been responsible in the past fifty years for the greater part of the 
significant inventions").

n84. See, e.g., Oliver E. Williamson, The Economic Institutions of 
Capitalism 258-59 (1985). Williamson downplays the importance of this 
effect, however, by noting that employees can choose between general 
purpose and firm-specific skills, and that highly skilled workers can 
usually obtain alternative employment, albeit at reduced productivity 
levels. Williamson fails to note that many firm- and technology-specific 
skills are required as a condition of continued employment and that reduced 
compensation often accompanies the reduced productivity.

n85. Jewkes et al., supra note 44, at 184-86.

n86. This might, in part, explain the general hostility of courts toward 
patents throughout much of the 20th century (that is, courts themselves may 
have devalued invention). See, e.g., Robert P. Merges, Commercial Success 
and Patent Standards: Economic Perspectives on Innovation, 76 Calif. L. 
Rev. 803, 821 n.65 (1988) (noting that the various federal circuit courts 
found two-thirds of patents adjudicated between 1921 and 1973 to be 
invalid). Some circuits (namely, the Second, Third, Eighth, and D.C. 
Circuits) were considerably worse. See Robert L. Risberg, Jr., Comment, 
Five Years Without Infringement Litigation Under the Semiconductor Chip 
Protection Act: Unmasking the Spectre of Chip Piracy in an Era of Diverse 
and Incompatible Process Technologies, 1990 Wis. L. Rev. 241, 267 n.130. 
The Supreme Court has been notoriously hostile to patents, at one point 
prompting Justice Jackson to declare that "the only patent that is valid is 
one which this court has not been able to get its hands on." Jungersen v. 
Ostby & Barton Co., 335 U.S. 560, 572 (1949) (Jackson, J., dissenting). The 
Court of Appeals for the Federal Circuit, formed in 1982 to have 
jurisdiction over patent appeals (among other duties), has been distinctly 
more "pro-patent" than its predecessor circuits and the Supreme Court. See 
Merges, supra, at 822 (noting that during its first four years, the Federal 
Circuit invalidated only 44% of the patents it adjudicated); Eric Schmitt, 
Judicial Shift in Patent Cases, N.Y. Times, Jan. 21, 1986, at D2 (noting 
the increasingly pro-patent sentiment of the Federal Circuit). But see 
Edmund L. Andrews, Rolling Back the Power of Inventors, N.Y. Times, Jan. 4, 
1993, at C2 (noting a possible reversal of this trend).

n87. Jewkes et al., supra note 44, at 162 n.1 (quoting S.C. Harland, Recent 
Progress in the Breeding of Cotton for Quality, J. Textile Inst., 
Conference Issue, Feb. 1955).

n88. See Folk, supra note 46, at 166 ("The inventor, whether he be a lone 
worker or a group worker, is as important as he ever was.").

n89. See, e.g., Mary H. Sears, The Corporate Patent: Reform or 
Retrogression, 22 Vill. L. Rev. 1085, 1120-21 nn.158-59 (1977) and sources 
cited therein.

n90. Comments of Paul Cook, CEO of Raychem Corporation, in William Taylor, 
The Business of Innovation: An Interview with Paul Cook, Harv. Bus. Rev., 
Mar.-Apr. 1990, at 96, 98-99; see also Schrage, supra note 68, at 44 ("The 
most successful corporate innovation systems aren't "systems' at all. They 
are environments hospitable to interesting people with innovative ideas.").

n91. But see infra 293-300 and accompanying text (discussing changes in the 
Patent Code and related case law).

n92. See Melvin A. Eisenberg, The Nature of the Common Law 159-60 (1988) 
(discussing the court's role as gap-filler for the common law).

n93. The common law allocation of property rights between employee and 
employer was developed over 90 years in a series of 19th- and early 
20th-century Supreme Court cases culminating in the landmark case of United 
States v. Dubilier Condenser Corp. See McClurg v. Kingsland, 42 U.S. (1 
How.) 202 (1843) (holding that the employment relationship justified the 
presumption of a license from employee to employer); United States v. 
Burns, 79 U.S. (12 Wall.) 246 (1871) (holding that employers had a right to 
inventions of "specifically employed" inventors); Hapgood v. Hewitt, 119 
U.S. 226 (1886) (holding that an employer's implied license is personal and 
non-transferable); Solomons v. United States, 137 U.S. 342 (1890) 
(discussing the "employed to invent" doctrine); McAleer v. United States, 
150 U.S. 424 (1893) (finding an express agreement to assign); Gill v. 
United States, 160 U.S. 426 (1896) (holding that an implied license 
estopped an employee from bringing an action against her employer); 
Standard Parts Co. v. Peck, 264 U.S. 52 (1924) (establishing the implied 
shop-right of an employer); United States v. Dubilier Condenser Corp., 289 
U.S. 178 (1933) (concluding that an employee not hired to invent is not 
obligated to assign a patent absent an express agreement). Many of the 
cases, including Dubilier, involved inventions of employees of the federal 
government. The common law concerning the allocation of rights to 
inventions of federal government employees have been modified by executive 
order and by statute, thus largely superseding Dubilier on its specific 
facts. See, e.g., Exec. Order No. 10,096, 3 C.F.R. 292 (1949-1953), 
reprinted as amended in 35 U.S.C. 266 (1988) (establishing basic policy 
with respect to domestic rights in inventions made by federal employees); 
37 C.F.R. 501.1-.10 (1991) (regulations implementing Exec. Order 10,096); 
Heinemann v. United States, 796 F.2d 451 (Fed. Cir. 1986) (upholding Exec. 
Order 10,096), cert. denied, 490 U.S. 930 (1987); infra note 142 
(discussing 15 U.S.C. 3710c-3710d (1988), which provides for mandatory 
compensation for inventors employed by the federal government). 
Nevertheless, Dubilier continues to state the general common law as to 
non-governmental employees.

n94. Dubilier, 289 U.S. at 188 ("Employment merely to design or to 
construct or to devise methods of manufacture is not the same as employment 
to invent.").

n95. Id. at 187.

n96. Id. at 187-89. This shop-right extends for the duration of the patent 
term and does not expire with termination of the employment relationship. A 
derivative of the shop-right doctrine, the "reverse shop-right," is 
discussed infra note 333 and accompanying text.

n97. Dubilier, 289 U.S. at 187-88. Interestingly, this common law 
allocation appears to have been based on the existence of an implied 
preinvention assignment agreement for inventive employees:

The reason that an inventive employee is bound to assign his patents to the 
employer is that he has only produced that which he was employed to invent. 
His invention is the precise subject of the contract of employment. A term 
of the employment agreement necessarily is that what he is paid to produce 
belongs to his paymaster. On the other hand, if the employment be general, 
albeit it cover a field of labor and effort in the performance of which the 
employee conceived the invention for which he obtained the patent, the 
employment contract is not so broadly construed as to require an assignment 
of the patent.

Id. at 187 (citations omitted).

n98. See Eisenberg, supra note 92, at 14-42 (1988) (discussing ways in 
which social propositions figure into judicial reasoning).

n99. For example, it can be difficult to distinguish specifically inventive 
from generally inventive employees on a legal basis. See, e.g., Mislow, 
supra note 6, at 63-67 and cases noted therein.

n100. Implicit in the common law formulation is the belief that generally 
inventive employees should, as a matter of fairness, be entitled to patent 
rights in their inventions. Employers, however, undoubtedly view the common 
law formulation as inequitable.

n101. In 1973, 84% of U.S. patents went to corporate assignees. See Parker, 
supra note 6, at 604 n.12. Additionally, a study of California inventors 
issued chemical patents during the last quarter of 1973 indicated that 90% 
had signed preinvention assignment agreements. Id. at 604 n.15; see also 
Dratler, supra note 6, at 155 (stating that "nearly all of the ... American 
scientists and engineers who work in industry have executed some sort of 
assignment agreement").

n102. The inalienable interest and the extent to which preinvention 
assignment agreements ought not to be enforced will be discussed infra Part 
IV.

n103. For example, we would not analyze whether the terms of a contract for 
the inter vivos transfer of a vital bodily organ were enforceable on 
contract grounds. The property concept prohibiting alienability of such 
essential organs supersedes any contractual consideration. See Munzer, 
supra note 34, at 43.

n104. Typical preinvention assignment agreements provide:

The undersigned agrees that he will disclose to the Company all inventions, 
improvements, software, processes, ideas, and innovations (hereinafter 
referred to, for convenience only, as "Discoveries"), made or conceived by 
him, whether or not patentable or copyrightable, either solely or in 
concert with others, and whether or not made or conceived during working 
hours, during the period of his employment, which (a) relate to the 
existing or contemplated business or research activities of the Company; 
(b) result from the use of the Company's proprietary information, 
facilities, or resources; or (c) arise out of or result from work performed 
for the Company. The undersigned acknowledges that he is employed to engage 
in research, design, and development. The undersigned further agrees to 
keep full and complete records concerning the development of discoveries as 
above defined and to tender such records to the company upon request.

Robert A. Spanner, Who Owns Innovation? The Rights and Obligations of 
Employers and Employees 120 (1984).

The author of this Comment has signed several preinvention assignment 
agreements, the latest of which provided, in pertinent part:

2. I hereby agree to disclose promptly to Company, the employer, a 
California corporation and hereby, without further compensations, assign 
and agree to assign to Company or its designee, my entire right, title and 
interest in, and to all designs, trademarks, discoveries, formula, 
processes, manufacturing techniques, trade secrets, inventions, 
improvements, ideas or copyrightable works (the "Proprietary Interests"), 
including all rights to obtain, register, perfect and enforce these 
Proprietary Interests

(i) which relate to any of my work during the period of my employment with 
Company, whether or not during normal working hours; or

(ii) which pertain to any line of current or anticipated business activity 
of Company; or

(iii) which are aided by the use of time, material or facilities of Company.

(agreement on file with author). For limitations on the reach of such 
agreements required by California statute, see infra note 137. For other 
forms of such agreements, see Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 830 
(Ct. App. 1986); Fletcher-Terry Co. v. Grzeika, 473 A.2d 1227, 1228 (Conn. 
App. Ct. 1984); Ingersoll-Rand Co. v. Ciavatta, 542 A.2d 879, 882, (N.J. 
1988); Andreaggi v. Relis, 408 A.2d 455, 458 (N.J. Super. Ct. Ch. Div. 1979).

n105. See David Stipp, Lab Legacy: Inventors Are Seeking Bigger Share of 
Gains from Their Successes, Wall St. J., Sept. 9, 1982, at 1 ("At one 
company, for example, says a spokesman for the ... concern, most employees 
must sign an agreement specifying, in effect, that "even if they invent 
something in their sleep, it belongs to the company.' ").

n106. See, e.g., United States v. Dubilier Condenser Corp., 289 U.S. 178, 
187 (1933) ("A patent is property and title to it can pass only by 
assignment. If not yet issued an agreement to assign when issued, if valid 
as a contract, will be specifically enforced."); see also Hovell, supra 
note 6, at 876-77.

n107. See Mislow, supra note 6, at 103; Dratler, supra note 6, at 142. For 
examples of overreaching, see Guth v. Minnesota Mining & Mfg. Co., 72 F.2d 
385 (7th Cir. 1934) (holding the portion of an agreement that was limitless 
in time and subject matter contrary to public policy and hence void); 
Aspinwall Mfg. Co. v. Gill, 32 F. 697 (C.C.D.N.J. 1887) (invalidating an 
agreement to assign all the products of one's future labors as an inventor).

n108. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262 (1979).

n109. See University Patents, Inc. v. Kligman, 762 F. Supp. 1212, 1219 
(E.D. Pa. 1991) ("A patent is a creature of federal statutory law and may 
be transferred only in the manner provided by such law.").

n110. 35 U.S.C. 261 (1988) provides for assignment of "applications for 
patent, patents, or any interest therein." A preinvention is a mere 
expectancy and thus cannot be assigned under this section.

n111. Kligman, 762 F. Supp. at 1219 (holding that "contracts to assign 
patent rights do not have a statutory basis"). Preinvention assignment 
agreements are agreements to assign expectancies that ripen into 
transferable property. This concept has parallels in other areas of the 
law. See, e.g., Eugene F. Scoles & Edward C. Halbach, Jr., Problems and 
Materials on Decedents' Estates and Trusts 83 (4th ed. 1987):



An expectancy, being but a hope of succeeding to the property of another 
living person, is not treated as an existing property interest and 
therefore cannot be assigned gratuitously. Thus, in a true sense no present 
transfer of an expectancy is possible. Statutes in some states expressly 
codify these common law principles. Consequently releases and "assignments" 
of expectancies can be made binding only under some theory other than that 
of a present transfer. In appropriate transactions, ... a court of equity 
may label the purported assignment an equitable assignment or a 
specifically enforceable contract to assign.

Similarly, current tort law forbids trading in unmatured tort claims, that 
is, claims for accidents that may occur in the future. See Robert Cooter, 
Towards a Market in Unmatured Tort Claims, 75 Va. L. Rev. 383, 383 (1989).

n112. Kligman, 762 F. Supp. at 1219 n.8; see also Aronson v. Quick Point 
Pencil Co., 440 U.S. 257, 262 (1979) ("Commercial agreements traditionally 
are the domain of state law. State law is not displaced merely because the 
contract relates to intellectual property which may or may not be 
patentable; the states are free to regulate the use of such intellectual 
property in any manner not inconsistent with federal law."); Donald S. 
Chisum, The Allocation of Jurisdiction Between State and Federal Courts in 
Patent Litigation, 46 Wash. L. Rev. 633 (1971); Hovell, supra note 6, at 
865 n.13 ("The patent laws do not create a federal common law concerning 
the pre-invention title to patents.").

Perhaps this is an area where Congress ought to "make a federal case out of 
it." The analytical distinctions between preinvention and postinvention 
agreements which justify the application of state law to the former and 
federal law to the latter are subtle, at best. Furthermore, this is an area 
where uniformity among the states is desirable.

n113. The sentiment of the courts is echoed by one commentator as follows:

A basic policy of contract law is that persons should be able to structure 
consensual transactions as they see fit and obtain the benefit of any 
bargains reached. A likely assumption between parties to an employment 
relationship is that when inventive behavior is part of the agreed 
relationship, such behavior has already been fully compensated by wages. In 
a sense, the products of the employee's mind have already been bought. 
Having given consideration for inventive services and having assumed the 
risk that such services might not be successful, the employer should 
receive as the benefit of the bargain any resulting intellectual property 
rights.

6 Chisum, supra note 5, 22.032, at 22-25.

Although preinvention assignment agreements are generally enforced, courts 
have refused to uphold them under certain factual circumstances. Assignment 
clauses may not be enforced (depending in some cases on the jurisdiction), 
for example, if they: (1) are unartfully drafted, see, e.g., Ferroline 
Corp. v. General Aniline & Film Corp., 207 F.2d 912, 926 (7th Cir. 1953) 
(narrowly construing a poorly drafted agreement), cert. denied, 347 U.S. 
953 (1954); Motorola, Inc. v. Fairchild Camera and Instrument Corp., 366 F. 
Supp. 1173, 1179 (D. Ariz. 1973) (finding an agreement impermissibly 
vague); (2) are oral or implied (for example, through an employee 
handbook), see, e.g., Kligman, 762 F. Supp. at 1220-29 (questioning the 
enforceability of assignment agreements implied through employee 
handbooks); (3) unreasonably attempt to bind employees for a period of time 
following the termination of the employment relationship (so-called 
"holdover clauses"), see, e.g., Ingersoll-Rand Co. v. Ciavatta, 542 A.2d 
879, 895 (N.J. 1988); (4) are applied to inventions conceived but not 
reduced to practice during the term of employment, see, e.g., Jamesbury 
Corp. v. Worcester Valve Co., 443 F.2d 205, 213 (1st Cir. 1971); (5) are 
"afterthought" agreements, see generally Jordan Leibman & Richard Nathan, 
The Enforceability of Post-Employment Noncompetition Agreements Formed 
After at-Will Employment Has Commenced: The "Afterthought" Agreement, 60 S. 
Cal. L. Rev. 1465 (1987); (6) are applicable to inventions that do not 
relate to the employer's present or anticipated business and that were 
developed on the employee's own time with the employee's own resources, see 
infra notes 136-43 and accompanying text (discussing state legislative 
responses); or (7) are unsupported by consideration other than the 
continued at-will employment of the employee or otherwise insufficient 
consideration, see, e.g., Kadis v. Britt, 29 S.E.2d 543, 548 (N.C. 1944) 
(noting that "consideration cannot be constituted out of something that is 
given and taken in the same breath - of an employment which need not last 
longer than the ink is dry upon the signature of the employee"). The 
position of the Kadis court is distinctly a minority one.

n114. See, e.g., John D. Calamari & Joseph M. Perillo, Contracts 1-3, at 6 
(3d ed. 1987) ("Most of contract law is premised upon a model consisting of 
two alert individuals, mindful of their self-interest, hammering out an 
agreement by a process of hard bargaining.").

n115. Modern contract law has significantly eroded the 19th-century model 
of unrestricted freedom of contract, particularly in the employment area. 
Id. Furthermore, employment contracts deserve a higher level of judicial 
scrutiny than, say, contracts for the sale of commodities, because "after 
all, what is being purchased and sold in the labor market is control over 
the time and activities of a human being." Paul C. Weiler, Governing the 
Workplace: The Future of Labor and Employment Law 21 (1990).

n116. Arthur A. Leff, Contract as Thing, 19 Am. U. L. Rev. 131, 143 (1970).

n117. See e.g., John P. Sutton, Employment Contracts, in Legal Rights of 
Chemists and Engineers 45, 58, 62 (Warren D. Niederhauser & E. Gerald Meyer 
eds., 1977):



A contract of adhesion occurs when the terms are prepared entirely for the 
benefit of one of the parties, and the other party does not have sufficient 
bargaining power to alter the terms. Today the employment contract is a 
contract of adhesion. Whether it is enforceable or not depends on whether 
it is unconscionable....

....

... The problem is that unless you are a Nobel Laureate you are not going 
to get fair provisions into the contract. It's bargaining power that gets 
fair contract provisions.... Those in demand, like corporation presidents, 
can write their own tickets. Most employees cannot.

See also Franklin D. Ubell, Assignor Estoppel: A Wrong Turn from Lear, J. 
Pat. & Trademark Off. Soc'y, Jan. 1989, at 26, 27 ("The new employee is 
compelled to accept such assignment provisions because of the far greater 
bargaining power of the employer and lack of access to patent counsel. The 
employee's salary at this point would appear to be dictated by supply and 
demand in the teeming marketplace for technical talent, rather than by any 
expectation that the employee will develop valuable patentable inventions.").

n118. Cubic Corp. v. Marty, 229 Cal. Rptr. 828, 834 (Ct. App. 1986) 
(quoting Chretian v. Donald L. Bren Co., 198 Cal. Rptr. 523 (Ct. App. 1984)).

n119. See, e.g., Calamari & Perillo, supra note 114, 9-40 (distinguishing 
"substantive" or "oppressive" unconscionability from "procedural" or 
"unfair surprise" unconscionability); Melvin A. Eisenberg, The Bargain 
Principle and Its Limits, 95 Harv. L. Rev. 741, 752-53 (1982) (same).

n120. Calamari & Perillo, supra note 114, 9-40.

n121. Id. The Marty court is referring, of course, to substantive rather 
than procedural unconscionability.

n122. See, e.g., Marty, 229 Cal. Rptr. at 834 (noting that the agreements 
at issue "are required on an industry-wide basis because the government 
requires defense contractors to give it title or license in any patents 
conceived or reduced to practice during the course of performance of 
government contracts").

n123. Thus, the preinvention assignment agreement is in some ways analogous 
to a liquidated damages provision, where one or both parties are unable (or 
unlikely) to estimate reasonably the likelihood of breach. Such provisions 
are often struck down by the courts. For further discussion of the import 
of the low probability of invention, see infra note 126 and accompanying text.

n124. Although courts have historically been reluctant to review the 
reasonableness of contract terms, this reluctance has been softening in 
recent years. See, e.g., Eisenberg, supra note 119, at 752 ("Over the last 
fifteen years, however, there have been strong indications that the 
principle of unconscionability authorizes a review of elements well beyond 
unfair surprise ....").

n125. See Rebecca S. Eisenberg, Proprietary Rights and the Norms of Science 
in Biotechnology Research, 97 Yale L.J. 177, 217 (1987) ("The serendipitous 
nature of research discoveries may make it difficult to place a value on 
the right to use a patented invention before the outcome of a research 
project is known.").

n126. Commentators note that contracting parties systematically tend to 
underestimate the likelihood of low-probability events, and that this 
tendency makes judicial intervention appropriate for long-term contracts. 
See, e.g., Melvin A. Eisenberg, The Structure of Corporation Law, 89 Colum. 
L. Rev. 1461, 1464-65 (1989). While the likelihood of a significant 
invention is a low-probability event for the employee-inventor, it is a 
high-probability event for the typical employer who has a diversified 
inventor portfolio.

n127. See generally Alan Schwartz & Louis L. Wilde, Imperfect Information 
in Markets for Contract Terms: The Examples of Warranties and Security 
Interests, 69 Va. L. Rev. 1387 (1983) (discussing contracts between firms 
and consumers and the role of imperfect information).

n128. See Vaughan, supra note 74, at 34 ("The hired inventors and 
technicians of business corporations generally receive only salaries for 
compensation ...."). This Comment assumes that the agreement is of the 
no-additional-consideration type. Of course, some, if not most, 
corporations will offer some additional compensation for patents applied 
for and/or granted. However, this additional compensation is often part of 
a separate "invention incentive" plan rather than part of the preinvention 
assignment agreement, and rarely bares any relationship to the actual value 
of the invention.

n129. Mislow, supra note 6, at 100. The continuation of the at-will 
employment, therefore, constitutes consideration for the patent assignment.

n130. Id. at 102.

n131. I am unaware of any cases where an employee's failure to create 
valuable, patentable inventions was asserted as a breach of an employment 
contract or used as evidence of cause for termination.

n132. See supra notes 23-24 and accompanying text.

n133. See, e.g., Richard A. Posner, Economic Analysis of Law 299-300 (3d 
ed. 1986) (describing labor monopsony as a form of market failure, though 
Judge Posner does not believe labor monopsony is a serious problem today in 
this country). Employers can typically exercise considerably more power 
over employees than they can over, say, consumers because jobs, especially 
jobs for employees with highly specialized skills, are less fungible than 
most products. See, e.g., Weiler, supra note 115, at 21-22; Parker, supra 
note 6, at 608-09.

n134. Contractual evisceration of governmental policies is not unique to 
the preinvention assignment agreement context. For example, corporate 
subsidized insurance and routine indemnification of directors and managers 
have collapsed the dual liability regime of corporate law whereby firms and 
their agents are jointly and severally liable for crimes and torts 
committed within the scope of the agent's employment. See, e.g., Reinier H. 
Kraakman, Corporate Liability Strategies and the Costs of Legal Controls, 
93 Yale L.J. 857, 859 (1984).

n135. See Posner, supra note 133, at 343.

n136. These states are California, Illinois, Minnesota, North Carolina, and 
Washington. See Cal. Lab. Code 2870-2872 (West Supp. 1992); Ill. Rev. Stat. 
ch. 140, para. 302 (1991); Minn. Stat. 181.78 (Supp. 1991); N.C. Gen. Stat. 
66-57.1, .2 (1991); Wash. Rev. Code Ann. 49.44.140, .150 (West Supp. 1991).

n137. For example, the California statute makes inoperative any 
preinvention assignment agreement as applied to inventions made on the 
employee-inventor's own time and with the employee-inventor's own resources 
unless, at the time of conception or reduction to practice, the invention 
relates to the employer's business or anticipated research or development, 
or unless the invention resulted from work performed by the employee for 
the employer. Cal. Lab. Code 2870(a).

The second preinvention assignment agreement set forth supra note 104, 
which was controlled by California law, contained the following provision:

3.I understand and agree that the foregoing does not apply to an invention 
for which no equipment, supplies, facility or trade secret information of 
Company was used and which was developed entirely on my own time, and which 
does not relate (1) to the business of Company, or (2) to the actual or 
demonstrably anticipated research or development of Company, or (3) which 
does not result from any work performed by me for Company, or (4) any 
invention which qualifies fully under the provision of California Labor 
Code Section 2870, a copy of which has been provided to me as an attachment 
to my copy of this agreement.

n138. By "important" inventions, I refer both to inventions that are of 
economic significance as well as to inventions that are of the greatest 
personal importance to the employee. The latter concept will be addressed 
infra Part IV, in the discussion of "personhood" interests in inventions.

n139. See Parker, supra note 6, at 617-19. For a discussion of the history 
of the proposed federal reforms, see id. See also Witte & Guttag, supra 
note 6, at 467-81.

n140. See, e.g., H.R. 4392, 88th Cong., 1st Sess. (1963).

n141. See, e.g., H.R. 3285, 98th Cong., 1st Sess. (1983); S. 1321, 93d 
Cong., 1st Sess. 263, 119 Cong. Rec. 9102, 9113 (1973); H.R. 15,512, 91st 
Cong., 1st Sess. (1970).

n142. See, e.g., Innovation and Patent Law Reform: Hearings Before the 
Subcomm. on Courts, Civil Liberties, and the Administration of Justice of 
the House Comm. on the Judiciary, 98th Cong., 2d Sess. (1984) hereinafter 
Invention and Patent Law Reform (containing the testimony and statements of 
many industry representatives opposing legislation establishing a mandatory 
compensation scheme for employee-inventors). Interestingly, however, the 
Technology Transfer Act of 1986 enacted, among other provisions, mandatory 
compensation for inventors employed by the federal government, including a 
forced minimum 15% share for inventors of any royalties or income received 
by the government for the inventions of its employee-inventors. 15 U.S.C. 
3710c (1988). The legislative history of the Act, however, specifically 
provides: "Some representatives of businesses that employ scientists fear 
that establishing royalty sharing for Federal employees will set a 
precedent for legislation mandating royalty sharing for private 
inventors.... The Committee does not intend for this provision affecting 
Government employees to set a precedent for private employees." S. Rep. No. 
283, 99th Cong., 2d Sess. 13 (1986), reprinted in 1986 U.S.C.C.A.N. 3442, 
3455.

n143. But see Innovation and Patent Law Reform, supra note 142 (testimony 
of several representatives of professional technical employees supporting 
proposed legislation establishing a mandatory compensation scheme for 
employee-inventors); Rights of Employed Inventors: Hearing Before the 
Subcomm. on Courts, Civil Liberties, and the Administration of Justice of 
the House Comm. on the Judiciary, 97th Cong., 2d Sess. 21-53 (1982) (same).

n144. See, e.g., supra notes 142-43 and accompanying text.

n145. See, e.g., Frank H. Easterbrook, Intellectual Property Is Still 
Property, 13 Harv. J.L. & Pub. Pol'y 108, 112-13 (1990).

n146. 35 U.S.C. 261 (1988).

n147. An idea can be used and enjoyed by many people at any given time 
without depriving other people of use or enjoyment of the idea, and thus 
has the attributes of an inexhaustible resource, or, in economic terms, a 
"free good." See Dratler, supra note 25, 1.011. Ideas are inexhaustible in 
another sense: the potential number of ideas is unlimited. At the same 
time, it is difficult to prevent others from using an idea once it is 
divulged and thus, like clean air or national defense, ideas have the 
attributes of a "public good." Therefore, ideas may be utilized by "free 
riders" who did not share in the cost of producing the information. Because 
ideas can be public goods, intellectual property protection is necessary to 
prevent an informational "tragedy of the commons." As one commentator has 
noted, "Assuming rational investors, absolute freedom to use information, 
i.e. an informational commons, could only result in there being no 
information worth using. Valuable information, i.e. information that is the 
result of purposive investment in learning, therefore depends upon the 
existence of private property rights." William Kingston, Innovation, 
Creativity and Law 83 (1990).

n148. Intellectual property rights are more limited in scope than are many 
tangible property rights. Intellectual property rights are of limited 
duration; tangible property rights, particularly in real property, are of 
unlimited duration. Even though some interests in tangible property may be 
of limited duration, the property vests in somebody indefinitely. The 
rights of ownership of intellectual property are more circumscribed than 
are those in other forms of property. For example, while a landowner has 
the right to possess the land, to exclude others, to dispose of the land, 
to use the land, to enjoy the fruits of the land, and to destroy, harm, or 
alter the land, a patent owner has only the right to exclude others from 
making, using, and selling the subject matter of the patent, and, in most 
cases (though not all), the right to dispose of the patent.

n149. Traditionally, tangible property, particularly real property, has 
been a device for concentrating wealth within families and for the 
maintenance of the status quo. Tangible property tends to perpetuate social 
stratification through primogeniture. Justin Hughes, The Philosophy of 
Intellectual Property, 77 Geo. L.J. 287, 290-91 (1988). Intellectual 
property, on the other hand, due to its means of creation and its limited 
duration is in theory wealth-redistributive or at least more 
wealth-neutral. Id. at 291. Intellectual property, then, is a "democratic" 
form of property; that is, it is a form of property obtainable by all 
citizens. See Hugo A. Meier, Thomas Jefferson and a Democratic Technology, 
in Technology in America, supra note 59, at 17, 28-30 (discussing 
Jefferson's belief that inventions should not be monopolized). Consider, 
too, the following remarks, made on the 150th anniversary of the patent 
system:



The success of our patent system is due to the fact that it is essentially 
democratic. Patents are granted as a matter of right and a good patent 
makes the little man an effective competitor of the big man. Our patents 
are, unlike others, not used for tariff purposes and are not burdened by 
taxes; nor are the exclusive rights granted for a limited period diluted by 
requirements for compulsory licenses or compulsory workings. These 
considerations have made us a nation of inventors, for even the least of us 
has the opportunity by creative thought to take his place among the great. 
The perpetuation of that system and the maintenance of the standard of 
living that we enjoy require that research and invention must continue to 
be encouraged and protected.

William B. Kerkam, Some Historical and Current Reflections on the American 
Patent System, in United States Patent Law Sesquicentennial Celebration, 
supra note 73, at 8, 9.

n150. Although the differences between intellectual property and tangible 
property were understood at the time the first Patent Act was drafted, they 
were not of great significance because most valuable property was tangible 
property. This is no longer the case today. Intellectual property is 
becoming increasingly valuable relative to tangible property. As one 
commentator recently noted:

A profound reallocation of wealth has been under way during the past thirty 
years. Increasingly, wealth is being defined in terms of intangible 
property: information and things done with information.

... The traditional forms of intangible property, patents and copyrights, 
do have their own statutory schemes for ownership and transfer, but these 
eighteenth century mechanisms hardly provide an ideal model for the future 
.... They were enacted as analogs to the rules which regulate real and 
personal property and as such they fail to account for the essential 
difference between tangible and intangible property; namely, that one loses 
value when it is divided while the other does not.

Samuel J. Sutton, Book Review, 31 Jurimetrics J. 357, 357-58 (1991).

n151. These theories include first occupancy or discovery, labor theory, 
personality theory, utilitarian theory, and critical legal studies. See 
Jesse Dukeminier & James E. Krier, Property 132-41 (2d ed. 1988).

n152. See Alan Ryan, Property 70 (1987).

n153. See, e.g., Phillip E. Johnson, Some Thoughts About Natural Law, 75 
Calif. L. Rev. 217, 217 (1987) ("Anyone who attempts to found concepts of 
justice upon reason and human nature engages in natural law philosophy."). 
For various formulations of natural rights, see John Christman, Can 
Ownership Be Justified by Natural Rights?, 15 Phil. & Pub. Aff. 156 (1986). 
Christman identifies a "strong sense" of natural right as a "right if and 
only if persons would have this right in a state of nature, prior to, and 
independent of, the establishment of any civil or political institution." 
Id. at 157. He identifies a "weak sense" of natural right as a right " "not 
created or conferred by men's voluntary action,' that is, it is not a right 
which is derived from positive law or social institutions." Id. at 158 
(quoting H.L.A. Hart, Are There Any Natural Rights?, in Rights 15 (David 
Lyons ed., 1979)). These are all contemporary secularized formulations of 
natural law. Historically, natural law had been conceptualized as the law 
of God (the "author" of both man and justice). See, e.g., Alan Ryan, 
Property and Political Theory 14-48 (1984) (discussing the relationship 
between Locke's labor theories of property and the purposes of God).

n154. "We hold these truths to be self-evident; that all men are created 
equal; that they are endowed by their creator with certain inalienable 
rights; that among these are life, liberty, and the pursuit of happiness 
...." The Declaration of Independence para. 2 (U.S. 1776).

n155. William E. Simonds, Natural Right of Property in Intellectual 
Production, 1 Yale L.J. 16, 17 (1891).

n156. See, e.g., The Federalist No. 43, at 309 (James Madison) (Benjamin F. 
Wright ed., 1961) ("The utility of the Patent and Copyright Clause will 
scarcely be questioned. The copyright of authors has been solemnly 
adjudged, in Great Britain, to be a right of common law. The right to 
useful inventions seems with equal reason to belong to the inventors.").

n157. See, e.g., Arachnid, Inc. v. Merit Indus., 939 F.2d 1574, 1578 (Fed. 
Cir. 1991) ("The act of invention itself vests an inventor with a common 
law or "natural' right to make, use and sell his or her invention ....").

n158. See id.

n159. See William C. Robinson, Patents 24 (1890), quoted in Robert A. 
Choate et al., Patent Law 2 (3d ed. 1987) ("An idea once communicated can 
no longer be exclusively appropriated and enjoyed.... Under the laws of 
nature the exclusive public use of an invention is thus impossible, and 
hence there is no natural right to such a use."); see also Robinson, supra, 
25, quoted in Choate et al., supra, at 3 ("The natural right of the public 
to appropriate all new ideas that may be voluntarily disclosed is no less 
evident than that of the inventor to conceal them. It is a law of nature 
that men should profit by the discoveries and inventions of each other.").

n160. See Arachnid, 939 F.2d at 1578-79 ("A patent in effect enlarges the 
natural right, adding to it the right to exclude others from making, using 
or selling the patented invention.... Ownership only of the invention gives 
no right to exclude, which is obtained only from the patent grant.") 
(citation omitted); see also Gayler v. Wilder, 51 U.S. (10 How.) 477, 493 
(1850) ("The inventor of a new and useful improvement certainly has no 
exclusive right to it, until he obtains a patent. This right is created by 
the patent, and no suit can be maintained by the inventor against any one 
for using it before the patent is issued.").

n161. See Simonds, supra note 155, at 23-25.

n162. 35 U.S.C. 102 (1988).

n163. See, e.g., Crown Die & Tool Co. v. Nye Tool & Mach. Works, 261 U.S. 
24, 30 (1923):


The most common case of the separation of the patent and natural rights is 
where the structure of the patent in suit is dominated by some other and 
broader patent. The broader patent may be older or younger or of the same 
date with the narrower patent. In either case, for the whole life of the 
broader patent, and this may be the whole life of the narrower patent as 
well, the patentee of the narrower patent has no natural right to make, use 
or sell the structure of his own patent....

The exclusive right and the natural right flow from different sources, are 
of different kinds and need not co-exist. It is impossible to maintain any 
clean-cut line of patent law unless we totally divorce the two rights, and, 
in discussing the patent right, assume that the natural right is immaterial.

The separation between natural law and patent law property rights was 
further elaborated in Graham v. John Deere Co., 383 U.S. 1, 9 (1966):

The patent monopoly was not designed to secure to the inventor his natural 
right in his discoveries. Rather, it was a reward, an inducement, to bring 
forth new knowledge. The grant of an exclusive right to an invention was 
the creation of society - at odds with the inherent free nature of 
disclosed ideas - and was not to be freely given.



Note that since copyright protects the form of expression rather than the 
idea itself, natural law can be used as a justification for copyright 
protection. See Simonds, supra note 155, at 24.

n164. Graham, 383 U.S. at 9.

n165. From the beginning of history, ideas have been shared, particularly 
in the realm of common defense, gathering food, building shelters, and 
clothing man.

Thus, it is "natural" both that persons with ideas and skills use them to 
their own advantage, and that other persons copy what they observe....

....

Regardless of any "natural" rights that artisans or tradesmen had in their 
own ideas, skills and inventions, these rights could not be profitably 
utilized without some means of protection and enforcement due to the 
"natural" right of others to copy what they observed.

Choate et al., supra note 159, at 1-3.

n166. Letter from Thomas Jefferson to Isaac McPherson, The Invention of 
Elevators, (Aug. 13, 1813), in The Writings of Thomas Jefferson 329, 335 
(Saul K. Padover ed., 1967).

n167. Lawrence C. Becker, Property Rights 22-23 (1977); see also Munzer, 
supra note 34, at 1-12.

n168. See, e.g., 2 William Blackstone, Commentaries *400-07 (including 
patents and copyrights with goods captured from alien enemies, things 
found, and animals wild by nature as having title by occupancy).

n169. See infra Section III. B.1.b.

n170. See Becker, supra note 167, at 24-26.

n171. See, e.g., id. at 24-31 (arguing that "being there first" is not a 
sound basis for claims to ownership); Dukeminier & Krier, supra note 151, 
at 133 (noting that first occupancy provides a weak normative justification 
for private property, though it fares somewhat better as a descriptive or 
explanatory theory of the origins of private property).

n172. Becker, supra note 167, at 24. Becker lists two other requirements 
for first occupancy to be a supportable justification of private property: 
"(3) the concept of actual occupation defines with reasonable clarity how 
much one can occupy; and (4) the occupier claims no more than a share as 
defined by (3)." Id. The latter two requirements do not preclude first 
occupancy as a justification when applied to preinvention disputes.

n173. The assumption here is that, for natural rights purposes, the 
employer (if a corporation) would not be limited to the statutory 
definition of inventor contained within the Patent Code which precludes 
corporate inventorship. In other words, it is assumed that it is possible 
for a corporation to have a natural right in an invention.

n174. It should be noted that some commentators continue to find natural 
rights support for intellectual property. For example, it has been asserted 
that the constitutional language of "securing" patent and copyright rights 
may imply a recognition of a natural rights basis in intellectual property. 
See Dratler, supra note 6, at 140 n.46 (citing Ramsey, The Historical 
Background of Patents, 18 J. Pat. Off. Soc'y 6, 14-20 (1936)); see also 
Sutton, supra note 117, at 50 (" "Everyone has the right to the protection 
of the moral and material interests resulting from any scientific, 
literary, or artistic production of which he is the author.' ") (quoting 
Universal Declaration of Human Rights, art. 27(2), adopted by U.N. General 
Assembly, Dec. 10, 1948); Amber L. Hatfield, Note, Life After Death for 
Assignor Estoppel: Per Se Application to Protect Incentives to Innovate, 68 
Tex. L. Rev. 251, 256 (1989) (discussing constitutional language in support 
of natural rights arguments). This support of natural rights in inventions, 
however, must be recognized as a justification of property rights of 
inventor-entities as against society and not as a justification for 
exclusive rights of either the employee-inventor or the employer.

n175. See, e.g., Becker, supra note 167, at 32; Grunebaum, supra note 35, 
at 52.

n176. John Locke, The Second Treatise of Government 16-30 (Thomas P. 
Peardon ed., 1952) (1690).

n177. Labor theories of property are sometimes divided into "avoidance" 
theories and "labor-desert" categories, each with normative and 
instrumental aspects. See Hughes, supra note 149, at 302-10. I feel that it 
is more helpful to divide labor theories into normative and instrumental 
categories.

n178. Hughes, supra note 149, at 296.

n179. Id.

n180. Few Supreme Court cases have clearly articulated the distinction 
between the normative and instrumental purposes underlying patent law. Some 
cases, particularly the earlier ones, expressly adopted the normative 
argument. See, e.g., Brown v. Duchesne, 60 U.S. (19 How.) 183, 195 (1857) 
(stating that patent laws "secure to the inventor a just remuneration from 
those who derive a profit or advantage, within the United States, from his 
genius and mental labors"); Scott Paper Co. v. Marcalus Co., 326 U.S. 249, 
255 (1945) (stating that "by the patent laws Congress has given to the 
inventor opportunity to secure the material rewards for his invention"); 
see also Brenner v. Manson, 383 U.S. 519, 536 (1966) ("A patent is not a 
reward for the search, but compensation for its successful conclusion."). 
Others offered normative arguments as important, though secondary to 
instrumental arguments. See, e.g., Zacchini v. Scripps-Howard Broadcasting 
Co., 433 U.S. 562, 577 (1977) (although " "reward to the inventor may be a 
secondary consideration,' ... patent protection was "intended definitely to 
grant valuable, enforceable rights.' ") (citations omitted). Still others 
clearly favored the instrumental theory over the normative. See, e.g., 
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 511 
(1917) (emphasizing that the Supreme Court "has consistently held that the 
primary purpose of our patent laws is not the creation of private fortunes 
for the owners of patents but is "to promote the progress of science and 
useful arts,' " (quoting U.S. Const. art. I, 8, cl. 8), while noting that 
inventors are to be "fairly, even liberally, treated").

In some cases, it appeared that the court offered both justifications 
without preference. For example, in Grant v. Raymond, 31 U.S. (6 Pet.) 218, 
242-43 (1832), Chief Justice Marshall stated that a patent is

the reward stipulated for the advantages derived by the public for the 
exertions of the individual, and is intended as a stimulus to those 
exertions....

....

... The great object and intention of the patent act is to secure to the 
public the advantages to be derived from the discoveries of individuals, 
and the means it employs are the compensation made to those individuals for 
the time and labour devoted to these discoveries.



The imprecise manner in which courts and commentators invoke labor 
justifications for intellectual property provides little theoretical 
guidance for the resolution of preinvention assignment disputes.

n181. Locke, supra note 176, at 17-24. The description of Locke's normative 
labor theories draws heavily upon Becker, supra note 167, at 32-43.

n182. Or in Locke's own words:

Every man has a property in his own person; this nobody has any right to 
but himself. The labor of his body and the work of his hands, we may say, 
are properly his. Whatsoever then he removes out of the state that nature 
has provided and left it in, he has mixed his labor with, and joined to it 
something that is his own, and thereby makes it his property. It being by 
him removed from the common state nature has placed it in, it has by this 
labor something annexed to it that excludes the common right of other men. 
For this labor being the unquestionable property of the laborer, no man but 
he can have a right to what that is once joined to, at least where there is 
enough and as good left in common for others.

Locke, supra note 176, at 17.

n183. Id. at 18. Note that the "value-added" justification is a variant of 
the basic labor justification.

n184. Id. at 20-21. The "labor-desert" justification is also a variant of 
the basic labor justification.

n185. Robert Nozick, for example, asks why one should expect that mixing 
one's labor with a thing results in ownership of the thing rather than in 
loss of one's labor. Robert Nozick, Anarchy, State, and Utopia 174-75 (1974).

n186. Such arguments are based on four basic propositions: (1) inventions 
require labor; (2) inventions generally have some value to society; (3) one 
invention does not deplete the "commons" of potential future inventions; 
and (4) intellectual property rights are necessary to prevent appropriation 
of the "public good" aspect of the invention. Few would dispute the verity 
of the first and second propositions, and the third and fourth propositions 
were identified earlier as general characteristics of intellectual 
property. See supra note 147 and accompanying text.

Some commentators do question, however, the application of labor theory as 
a justification for intellectual property rights. See, e.g., Becker, supra 
note 167, at 47 (raising some concerns regarding the application of 
normative labor justifications to intellectual property, such as why 
certain classes of ideas are protected while others are unprotected, and 
why patents and copyrights expire after a term of years when rights in 
other property acquired by labor do not expire).

n187. Instrumental justifications are similar to, but distinguishable from, 
utilitarian justifications. Utilitarian justifications for private property 
are based on the assumption that private property is necessary in order to 
achieve utility, or "human happiness." See, e.g., Becker, supra note 167, 
at 57. Traditionally, this definition included a broad range of human 
social welfare concerns, but due to the difficulty of measuring most forms 
of human satisfaction, a narrower form of utilitarianism has developed 
based on the premise that private property is necessary to increase human 
economic welfare. Id. The former form of utilitarianism is referred to here 
as traditional utilitarianism, while the latter is referred to as 
instrumentalism.

n188. See, e.g., The Federalist, supra note 156, at 309 (noting utilitarian 
basis of constitutional Patent Clause).

n189. See, e.g., Hughes, supra note 149, at 303-04.

n190. Justice Stone's dissent in United States v. Dubilier Condenser Corp., 
289 U.S. 178 (1933), describes scientists who are either irrational or from 
a nobler era: "It has been said that many scientists in the employ of the 
government regard the acceptance of patent rights leading to commercial 
rewards in any case as an abasement of their work." Id. at 218 n.9 (Stone, 
J., dissenting) (citing Hearings on Exploitation of Inventions by 
Government Employees Before the Senate Comm. on Patents, 65th Cong., 3d 
Sess. 16-17 (1919)).

n191. Hughes, supra note 149, at 303. This instrumental argument should be 
distinguished from the normative argument, discussed supra Section 
III.B.1.b. Both arguments are based on two ideas: (1) labor is unpleasant, 
and (2) labor is necessary. The instrumental argument concludes that 
property must be used to motivate people to do unpleasant but necessary 
work. The normative argument, in contrast, concludes that people ought to 
receive property for doing unpleasant but necessary work.

n192. See Hughes, supra note 149, at 300.

n193. See id. at 302.

n194. But see Bennett, supra note 20, at 31 (showing "Love of Inventing" as 
the most frequently mentioned motive or incentive in survey of inventors).

n195. For a discussion of "public good," see supra note 147 and 
accompanying text.

n196. One economic commentator, for example, has parodied the economic 
literature on patents as follows: "What does the patent system give us, and 
at what cost? ... Bentham claims something for nothing; Taussig responds 
nothing for nothing, Plant rejoins nothing for something; Arrow replies 
something (but not enough) for something ...." George L. Priest, What 
Economists Can Tell Lawyers About Intellectual Property: Comment on Cheung, 
in 8 Res. in L. & Econ. 19 (John Palmer & Richard O. Zerbe, Jr. eds., 
1986). In United States v. Dubilier Condenser Corp., 289 U.S. 178 (1933), 
the Supreme Court described the quid pro quo in the following terms:

An inventor deprives the public of nothing which it enjoyed before his 
discovery, but gives something of value to the community by adding to the 
sum of human knowledge. He may keep his invention secret and reap its 
fruits indefinitely. In consideration of its disclosure and the consequent 
benefit to the community, the patent is granted. An exclusive enjoyment is 
guaranteed him for seventeen years, but upon the expiration of that period, 
the knowledge of the invention enures to the people, who are thus enabled 
without restriction to practice it and profit by its use.

Id. at 186-87 (citations omitted).

n197. See, e.g., Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 
576 (1977) (stating that the desire to provide "an economic incentive for 
the inventor to make the investment required to produce" an invention 
underlies the patent law); Goldstein v. California, 412 U.S. 546, 555 
(1973) ("The objective of the Copyright and Patent Clause is to promote the 
progress of science and the arts. As employed, the terms "to promote' are 
synonymous with the words "to stimulate,' "to encourage,' or "to induce.' 
"). This view, is, of course, consistent with the constitutional grant of 
authority to Congress "to promote the Progress of Science and useful Arts, 
by securing for limited Times to Authors and Inventors the exclusive Right 
to their respective Writings and Discoveries." U.S. Const. art. I, 8, cl. 8.

n198. See, e.g., Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176, 221 
(1980) ("The policy of stimulating invention that underlies the entire 
patent system runs deep in our law."); Dr. Miles Medical Co. v. John D. 
Park & Sons Co., 220 U.S. 373, 401 (1911) ("The purpose of the patent law 
is to stimulate invention ....").

n199. The Court in Aronson v. Quick Point Pencil Co., 440 U.S. 247 (1979), 
listed the following purposes of the patent system:

First, patent law seeks to foster and reward invention; second, it promotes 
disclosure of inventions to stimulate further innovation and to permit the 
public to practice the invention once the patent expires; third, the 
stringent requirements for patent protection seek to assure that ideas in 
the public domain remain there for the free use of the public.

Id. at 262.

n200. Edwin Mansfield, Intellectual Property, Technology and Economic 
Growth, in Intellectual Property Rights in Science, Technology, and 
Economic Performance: International Comparisons 17, 23 (Francis W. Rushing 
& Carole G. Brown eds., 1990) hereinafter International Comparisons; see 
also Louis Kaplow, The Patent-Antitrust Intersection: A Reappraisal, 97 
Harv. L. Rev. 1813, 1823-24 (1984) (listing reward to patentee, stimulation 
of inventive activity, and improvement of social welfare as goals of the 
patent system); Yusing Ko, Note, An Economic Analysis of Biotechnology 
Patent Protection, 102 Yale L.J. 777, 791-800 (1992) (discussing incentive 
to invent and incentive to disclose theories).

n201. See, e.g., Senate Subcomm. on Patents, Trademarks, and Copyrights, 
Senate Comm. on the Judiciary, 85th Cong., 2d Sess., An Economic Review of 
the Patent System (Study No. 15, Comm. Print 1958):

No economist, on the basis of present knowledge, could possibly state with 
certainty that the patent system, as it now operates, confers a net benefit 
or a net loss upon society. The best he can do is to state assumptions and 
make guesses about the extent to which reality corresponds to these 
assumptions.

See also Ward S. Bowman, Patent and Antitrust Law: A Legal and Economic 
Appraisal 15-32 (1973) (summarizing conflicting economic appraisals of the 
patent system); Kaplow, supra note 200, at 1833-34 ("Yet our knowledge is 
inadequate to inspire great confidence even in the desirability of having a 
patent system at all, much less in the ability to make the subtle 
measurements of marginal effects that determine the ratio implicit in the 
optimal patent life."); Oddi, supra note 15, at 1101 (noting that while 
there is insufficient economic evidence to abolish the existing patent 
system, there would be insufficient economic evidence to justifying 
establishing a patent system in a society that did not already have one); 
Priest, supra note 196, at 21 ("Economists know almost nothing about the 
effect on social welfare of the patent system or of other systems of 
intellectual property.").

A recent study has concluded that investors are indifferent to the 
knowledge that a firm's patent has been found invalid. See Page M. Kaufman, 
An Empirical Study of the Effect of Patent Invalidity Judgments on the 
Abnormal Returns of Publicly Traded Securities, 19 Am. Intell. Prop. L. 
Ass'n Q.J. 282 (1991).

n202. This corresponds to Mansfield's first justification. See supra text 
accompanying note 200. For examples of commentary supporting this view, see 
Sutton, supra note 6, at 152-53:



The incentive for a reward as drafted in the Constitution goes to the 
inventor, not his sponsor, employer, banker or spouse. It is the inventor 
who is to be encouraged, not the investor of mere money. Money cannot buy 
inventions, which do not exist until created. Individual people must create 
them....

An incentive, by definition, is an inducement to action. If the employee 
has nothing more than a salary, which he will get whether he invents or 
just performs the research assigned to him, then what is the inducement to 
create something which is not obvious to one of ordinary skill in the art? 
... Some people will create without economic incentives, a pat on the back 
being sufficient for a long time. However, economic incentive - money - is 
a powerful force that can induce the extraordinary creativity that produces 
inventions. The founding fathers recognized it and wrote the incentive 
concept into the Constitution. Present-day employers have neutralized this 
incentive by requiring all inventions to be turned over to the employer 
even before they are conceived.

See also Ubell, supra note 117. Ubell notes that

the Constitution ... contemplates promoting the progress of science and the 
useful arts by securing to inventors for a limited time exclusive rights to 
their inventions. The Constitution does not suggest promoting the progress 
of science and the useful arts by "securing to capitalists exclusive rights 
to the creations of inventors."

Id. at 30 (citation omitted).

n203. This corresponds to Mansfield's second justification. See supra text 
accompanying note 200. For examples of commentary supporting this view, see 
Alden F. Abbott, Developing a Framework for Intellectual Property 
Protection to Advance Innovation, in International Comparisons, supra note 
200, at 311, 320-21:

Risk-averse firms will be reluctant to hire research staffs and establish 
research facilities if there is no assurance that profits can be earned on 
that small portion of innovative projects. Intellectual property protection 
provides that necessary assurance. Without such protection firms would run 
the risk that, because of free-riding, their innovations would earn 
insufficient profits to offset the losses stemming from failed research 
efforts. For the same reason, capital markets would be far less willing to 
provide funds for independent research efforts in a world without 
intellectual property protection. In short, without intellectual property 
protection, talented scientists and engineers would find it much harder to 
obtain the backing needed to explore new avenues of research, and 
innovation would proceed at a far slower pace to the detriment of society.

See also Bowman, supra note 201, at 23-28 (summarizing arguments, 
principally those of Arrow, that markets tend to under-reward invention, 
and that patent protection is thus needed to correct for this market 
failure). Commentators adopting this view tend to downplay the role of 
individuals. See, e.g., Zuber, supra note 6, at 146, 148:



Let us look for a moment at the effects of patent policy on the inventor, 
the repository of the creativity that we are discussing.... There is an 
increased tendency to assert individual rights to ideas which may properly 
be ascribed to a group effort....

....

In speaking of recognition, direct monetary awards to inventors needs 
mentioning. Proponents of this type of reward believe that creativity would 
be fostered. Direct monetary rewards certainly could be part of any patent 
policy, but, personally, I have great difficulty with this concept stemming 
from the fact that projects are assigned and are not selected by those 
doing the research. The truly creative people are a precious few. Good 
management is apt to reserve them for projects where immediate results are 
required. I have known cases where scientists of little more than average 
ability have made inventions of considerable economic importance because 
management could afford to assign them to long-term projects. Providing 
high rewards for such efforts is akin to a lottery. Such rewards are not 
apt to foster a climate in which individuals feel rewards stem from 
excellence rather than from the luck of the draw. Consequently, I have very 
deep and profound doubts that direct monetary awards are apt to make a 
positive contribution to a creative environment.

n204. See Dratler, supra note 6. Actually, this is really a normative labor 
argument rather than an instrumental one. It is mentioned here, however, 
because Dratler frames his argument in instrumental terms.

n205. See supra note 201 and accompanying text.

n206. Dratler, supra note 6, at 173.

n207. Id. at 172-75. Corporate technical workplaces, like most workplaces, 
are hierarchical environments: technicians report to engineers, who report 
to project leaders, who report to managers, and so on. Each has different 
priorities. The support of an engineering manager may be critical to an 
invention's success (such as in assigning resources) but may not rise to 
the level recognized by the patent law for "reward." In fact, the manager 
understandably may have a disincentive for the engineer to invent (and 
expend time and resources) when the invention is unrelated to an area for 
which the manager has responsibility or in which the corporation has a bona 
fide business interest. Yet the invention may be very valuable to society. 
The point is that there is an agency cost associated with allowing 
corporations to provide their own incentive structures for inventors in 
place of those provided by the patent law. That is, there is at least a 
potential divergence between the interests of society and those of 
corporations in the fostering of inventions.

n208. This argument is based on a variation of the Coase Theorem. See 
Ronald H. Coase, The Problem of Social Cost, 3 J.L. & Econ. 1 (1960).

n209. See supra notes 125-26 and accompanying text for discussion of the 
difficulties of ex ante and ex post bargaining.

n210. See supra notes 113-17 and accompanying text for discussion of 
adhesion contracts.

n211. The invention may be deemed non-novel, obvious, or anticipated by the 
Patent Office.

n212. Professor Kitch, for example, has proposed a "prospect" theory of 
patents, analogizing the patent system to the property system protecting 
mineral rights. Kitch posits that patents essentially grant exclusive 
rights to develop a prospect - the prospect of future inventions. See 
Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & 
Econ. 265, 266 (1977) (first proposing the prospect theory). But see Roger 
L. Beck, The Prospect Theory of the Patent System and Unproductive 
Competition, in 5 Res. in L. & Econ. 193, 199-206 (Richard O. Zerbe, Jr., 
ed., 1983) (arguing that empirical evidence undermines the prospect 
theory). Grady and Alexander have proposed a rent dissipation theory of 
patents whereby patents are rewarded to maximize the difference between the 
value of an invention to society and its development cost by discouraging 
copying and redundant development costs and preserving such rents for 
successful inventors. Mark F. Grady & Jay I. Alexander, Patent Law and Rent 
Dissipation, 78 Va. L. Rev. 305, 316-21 (1992). Neither the prospect theory 
nor the rent dissipation theory adequately accounts for the firm/employee 
dichotomy of the inventor-entity.

n213. Munzer, supra note 34, at 81.

n214. Id. at 82.

n215. Id. at 84.

n216. See id. at 125-29.

n217. See Ryan, supra note 153, at 73-90 (discussing Kant and personhood 
theory). Personhood theory today places property that is constitutive of 
personality outside the market. This is perhaps first alluded to in a 
oft-quoted passage by Kant:



In the kingdom of ends everything has either a price or a dignity. If it 
has a price, something else can be put in its place as an equivalent; if it 
is exalted above all price and so admits of no equivalent, then it has a 
dignity.

....

... Morality, and humanity so far as it is capable of morality, is the only 
thing which has dignity.

Immanuel Kant, Groundwork of the Metaphysic of Morals 102 (H.J. Paton 
trans., 1964).

n218. See Steven B. Smith, Hegel's Critique of Liberalism 70-80 (1989).

n219. Another 18th-century natural-rights-based property justification with 
elements of personhood is the concept of artists' moral rights. See 
generally Dratler, supra note 25, 6.016; Karen M. Corr, Comment, Protection 
of Art Work Through Artists' Rights: An Analysis of State Law and Proposal 
for Change, 38 Am. U. L. Rev. 855 (1989); Craig A. Wagner, Comment, Motion 
Picture Colorization, Authenticity, and the Elusive Moral Right, 64 N.Y.U. 
L. Rev. 628 (1989). The moral rights of artists and authors have been 
especially important in French jurisprudence, where rights in works of art 
and literature have been divided into economic rights (droits patrimoniaux) 
and creative rights (droit moral). Corr, supra, at 863; Wagner, supra, at 
687. The concept of personal, inalienable, moral rights of artists has much 
in common with the personhood interests of inventors discussed in this 
Comment. Personhood, as described here, however, seeks to protect different 
interests and is based on a different philosophic foundation than moral 
rights.

n220. G.W.F. Hegel, Elements of the Philosophy of Right (Allen W. Wood ed. 
& H.B. Nisbet trans., 1991). The editor of this edition cautions that 
"Hegel is cited much more frequently than he is read, and discussed far 
oftener than he is understood." Id. at xxvii. I have quoted liberally from 
Hegel in these notes so as to address the former concern, if not the latter.

n221. "As the immediate concept and hence also as essentially individual, a 
person has a natural existence Existenz partly within himself and partly as 
something to which he relates as to an external world." Id. 43 (alterations 
in translation).

n222. The person must give himself an external sphere of freedom in order 
to have being as Idea. The person is the infinite will, the will which has 
being in and for itself, in this first and as yet wholly abstract 
determination. Consequently, this sphere distinct from the will, which may 
constitute the sphere of its freedom, is likewise determined as immediately 
different and separable from it.

Id. 41.

n223. "Only in this freedom is the will completely with itself bei sich, 
because it has reference to nothing but itself, so that every relationship 
of dependence on something other than itself is thereby eliminated." Id. 23 
(alteration in translation).

The universality of this will which is free for itself is formal 
universality, i.e. the will's self-conscious (but otherwise contentless) 
and simple reference to itself in its individuality Einzelheit; to this 
extent, the subject is a person. It is inherent in personality that, as 
this person, I am completely determined in all respects (in my inner 
arbitrary will, drive, and desire, as well as in relation to my immediate 
external existence Dasein), and that I am finite, yet totally pure 
self-reference, and thus know myself in my finitude as infinite, universal, 
and free.

Id. 35 (alteration in translation).

n224. G.W.F. Hegel, Hegel's Philosophy of Mind 382 (William Wallace & A.V. 
Miller trans., 1971).

n225. See supra notes 221, 223.

n226. To have even external power over something constitutes possession, 
just as the particular circumstance that I make something my own out of 
natural need, drive, and arbitrary will is the particular interest of 
possession. But the circumstance that I, as free will, am an object 
gegenstandlich to myself in what I possess and only become an actual will 
by this means constitutes the genuine and rightful element in possession, 
the determination of property.

Hegel, supra note 220, 45 (alteration in translation).

n227. Or, in Hegel's terms, the "existence" Dasein of personality. See id. 
51 ("property ... is the existence Dasein of personality") (alteration in 
translation); id. 50 ("personality must have existence Dasein in 
property.") (alteration in translation). This concept has also been 
translated as saying that "property is the embodiment of personality." 
G.W.F. Hegel, Hegel's Philosophy of Right 51 (T.M. Knox trans., 1952) 
(alteration in translation).

n228. That a thing Sache belongs to the person who happens to be the first 
to take possession of it is an immediately self-evident and superfluous 
determination, because a second party cannot take possession of what is 
already the property of someone else.

... The first is not the rightful owner because he is the first, but 
because he is a free will, for it is only the fact that another comes after 
him which makes him the first.

Hegel, supra note 220, 50 (alteration in translation).

n229. "My inner idea Vorstellung and will that something should be mine is 
not enough to constitute property ... on the contrary, this requires that I 
should take possession of it. The existence which my willing thereby 
attains includes its ability to be recognized by others." Id. 51 
(alteration in translation).

n230. That mode of taking possession which is not actual in itself but 
merely represents my will occurs when I mark a thing Sache with a sign to 
indicate that I have placed my will in it ....

Taking possession by designation is the most complete mode of all .... If I 
seize a thing or give form to it, the ultimate significance is likewise a 
sign, a sign given to others in order to exclude them and to show that I 
have placed my will in the thing.

Id. 58 (alteration in translation).

n231. It is possible for me to alienate my property, for it is mine only in 
so far as I embody my will in it. Thus, I may abandon (derelinquiere) as 
ownerless anything belonging to me or make it over to the will of someone 
else as his possession - but only in so far as the thing Sache is external 
in nature.

Id. 65 (alteration in translation).

n232. "Those goods, or rather substantial determinations, which constitute 
my own distinct personality and the universal essence of my 
self-consciousness are therefore inalienable, and my right to them is 
imprescriptible. They include my personality in general, my universal 
freedom of will, ethical life, and religion." Id. 66.

n233. See Margaret J. Radin, The Liberal Conception of Property: Cross 
Currents in the Jurisprudence of Takings, 88 Colum. L. Rev. 1667 (1988); 
Margaret J. Radin, Market-Inalienability, 100 Harv. L. Rev. 1849 (1987) 
hereinafter Radin, Market-Inalienability; Margaret J. Radin, Property and 
Personhood, 34 Stan. L. Rev. 957 (1982) hereinafter Radin, Property and 
Personhood; Margaret J. Radin, Residential Rent Control, 15 Phil. & Pub. 
Aff. 350 (1986) hereinafter Radin, Residential Rent Control. It should be 
noted that personhood has been investigated as a basis for the Lockean 
labor justification of property as well. See Becker, supra note 167, at 
48-49. Compare the Hegelian justification (set forth supra Section IV.A.1), 
the Radinian justification (set forth infra notes 234-47 and accompanying 
text), and Becker's proposed (but ultimately rejected) explanation for a 
labor justification of property (set forth here):

Labor is (in some circumstances) psychological appropriation - 
appropriation in the sense of a "felt incorporation" of the thing labored 
on "into' one's person. If it is true than I "am' (psychologically) what I 
want to become as well as what I have become, then one can say with similar 
validity that I am what I have made. I am what I was, what I do, what I 
want to do, and what I produce. These are all greatly abbreviated locutions 
for complex facts about personality ....

Becker, supra note 167, at 49.

n234. Radin, Property and Personhood, supra note 233, at 959-61.

n235. Id. at 959.

n236. Id. at 987.

n237. For judicial support of Radin's theory of a personhood interest in 
one's home, see Silverman v. Barry, 845 F.2d 1072, 1081 (D.C. Cir.) (noting 
that "the law has long shown a special solicitude for the interest of a 
person in being secure in his or her home" (citing Radin, Property and 
Personhood, supra note 233), cert. denied, 488 U.S. 956 (1988).

n238. Radin, Property and Personhood, supra note 233, at 959.

n239. Id. at 959-60.

n240. This is an awkward linguistic construct, but the obvious alternative, 
"personal property," carries too much legal baggage to use in this context.

n241. Radin, Property and Personhood, supra note 233, at 960.

n242. Radin, Residential Rent Control, supra note 233, at 362.

n243. "When something is noncommodifiable, market trading is a disallowed 
form of social organization and allocation. We place that thing beyond 
supply and demand pricing, brokerage and arbitrage, advertising and 
marketing, stockpiling, speculation, and valuation in terms of the 
opportunity cost of production." Radin, Market-Inalienability, supra note 
233, at 1855.

n244. Radin, Property and Personhood, supra note 233, at 986.

n245. Radin, Market-Inalienability, supra note 233, at 1857.

n246. Id. at 1955.

n247. Id. at 1856.

n248. United States v. Dubilier Condenser Corp., 289 U.S. 178, 188 (1933).

n249. For example, in tracing the history of patents, William Kingston 
remarks that the "legal protection of disembodied information thenceforward 
reflected the view that the work of writers and inventors is an extension 
of their personalities, and consequently in some sense, "theirs.' " 
Kingston, supra note 147, at 104.

n250. See Brown, supra note 42, at 236 (interviewing inventor Steven 
Wozniak: "I recognized that with every little key I had hit upon, I had 
done something in so few parts that it was outstanding in an artistic 
sense. To me, an artistic design meant very few components doing the 
maximum job.").

n251. See, e.g., Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 
250 (1903) (Holmes, J.) ("The copy a lithograph is the personal reaction of 
an individual upon nature. Personality always contains something unique.... 
That something he may copyright ...."). For a psychological examination of 
the relationship between art and artist, see generally Otto Rank, Art and 
Artist: Creative Urge and Personality Development (Charles F. Atkinson 
trans., 1932).

n252. Radin, Market-Inalienability, supra note 233, at 1908. These terms 
are defined infra text accompanying notes 257, 258, and 259, respectively.

n253. Radin, Market-Inalienability, supra note 233, at 1908.

n254. Id. at 1909. Although Professor Radin does not address the question 
of whether inventions represent justifiable personal property, her 
treatment of a person's identification with her work as a justifiable 
personhood interest provides a useful insight:

The view that personhood is involved with continuity of context need not be 
limited to the property or object relations heirlooms, wedding rings, 
homes, and so on I am discussing here. It could generate other categories 
of human interactions where continuity is involved with personhood, perhaps 
most notably in connection with work and the workplace.

Radin, Residential Rent Control, supra note 233, at 363.

n255. See Radin, Market-Inalienability, supra note 233, at 1918. Highly 
routinized work will tend to be more commodified than creative work because 
it is reasonable to expect greater non-monetary returns from the latter 
than the former. Work is partially decommodified through such mechanisms as 
minimum wage requirements, health and safety requirements, and 
anti-discrimination requirements. Id. at 1919. Consider the following 
description of work on an automobile assembly line, work that is highly 
commodified (though highly regulated):

The only meaning of the job is in the pay check, not in anything connected 
with the work or the product. Work appears as something unnatural, a 
disagreeable, meaningless and stultifying condition of getting the pay 
check, devoid of dignity as well as of importance.... No wonder that this 
results in an unhappy and discontented worker - because a pay check is not 
enough to base one's self-respect on.

Peter F. Drucker, Concept of the Corporation 179 (1946). On the other hand, 
Professor Williamson would reject the notion that highly commodified work 
is an "inferior" form of employment since some workers will actually prefer 
such jobs. See Williamson, supra note 84, at 268-69 (asserting that 
automobile assembly workers, for example, choose highly commodified work 
because they voluntarily sacrifice work satisfaction for greater pay). 
Professor Williamson acknowledges, however, that "capitalism is prone to 
undervalue dignity and that institutional safeguards can sometimes be 
forged that help to correct the condition." Id. at 271.

n256. Radin, Market-Inalienability, supra note 233, at 1920.

n257. Id. at 1904.

n258. Id.

n259. Id. "Contextuality implies that self-development in accordance with 
one's own will requires one to will certain interactions with the physical 
and social context because context can be integral to self-development." 
Id. at 1905.

n260. See id. at 1920 (equating control over work with the freedom aspect 
of personhood).

n261. See id. (equating continuity of work with the identity aspect of 
personhood).

n262. See id. (equating "self-conception inseparable from one's work" with 
the contextuality aspect of personhood).

n263. See id. at 1905-06.

n264. Among the "particulars" integral to the self are "politics, work, 
religion, family, love, sexuality, friendship, altruism, experiences, 
wisdom, moral commitments, character, and personal attributes." Id. at 1906.

n265. James Boyle, A Theory of Law and Information: Copyright, Spleens, 
Blackmail, and Insider Trading, 80 Calif. L. Rev. 1416, 1463 (1992) 
(questioning the special status of authorship generally).

n266. Letter from Thomas Jefferson to Isaac McPherson, supra note 166, at 334.

n267. See Drucker, supra note 255, at 179 (noting the lack of personhood 
associated with the product of an autoworker).

n268. 35 U.S.C. 111 (1988). For exceptions to this rule, see id. 117-118 
(dealing with the death or incapacity of an inventor or her refusal to 
assign).

n269. Id. 115.

n270. For example, although damages are by no means unheard of, injunctive 
relief is virtually automatic upon a finding of patent infringement. 
Injunctive relief is authorized by 35 U.S.C. 283 (1988). Once final 
judgment has been entered as to validity and infringement, the general rule 
is that an injunction will issue, absent a sufficient reason for denying 
it. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1247 (Fed. Cir.), 
cert. denied, 493 U.S. 853 (1989); see also Paul Goldstein, Copyright, 
Patent, Trademark and Related State Doctrines 503 (3d ed. 1990) ("Courts 
will grant a prevailing patent owner an injunction for the remainder of the 
patent's life almost as a matter of course . ..."). The injunctive remedy 
is thought to be required in order to achieve the goals sought by the 
patent system. See, e.g., Smith Int'l, Inc. v. Hughes Tool Co., 718 F.2d 
1573, 1578, (Fed. Cir.) (noting that "without the right to obtain an 
injunction, the right to exclude granted to the patentee would have only a 
fraction of the value it was intended to have, and would no longer be as 
great an incentive to engage in the toils of scientific and technological 
research."), cert. denied 464 U.S. 996 (1983).

n271. Comment 2 to U.C.C. 2-716 speaks of contracts for the sale of 
"heirlooms or priceless works of art" as those which have been specifically 
enforced, though the comment goes on to state that "uniqueness is not the 
sole basis" of remedy under the section. U.C.C. 2-716 cmt. 2 (1990). The 
examples sound remarkably like those Radin says exemplify personhood 
property. Professor Dan-Cohen has noted the relationship between personhood 
property and specific enforcement:



The view that "property is but the periphery of my person extended to 
things" endows our property (or in any event, some parts of it) with the 
special worth that calls for specific enforcement. This, of course, does 
not deny our right to alienate our property for a price, if we so choose. 
But as long as we have not freely elected to do so, our property (or 
whatever part of it that is thought to fit the perspective under 
consideration) remains infused with our will and bound up, through it, with 
our moral personality. As such, it should not be forcefully priced away 
from us.

Dan-Cohen, supra note 55, at 97 (quoting Rudolph von Jhering, The Struggle 
for Law 59 (1915)).

n272. Hughes, supra note 149, at 339-54. Hughes notes that "poems, stories, 
novels, and musical works are clearly receptacles for personality"; in 
contrast, Hughes argues that patents are not thought of "as manifesting the 
personality of an individual, but rather as manifesting a raw, almost 
generic insight." Id. at 340-41.

n273. See id. at 339.

n274. See id. at 339-44.

n275. See id. at 339, 344-50.

n276. It should be noted as a threshold matter that personhood will 
ultimately be used in this Comment not as a justification for patent 
rights, but, to the contrary, as a trump of patent rights, as the basis of 
a defense to patent infringement. See infra Sections IV.C.3.b-c. 
Nevertheless, it is useful to examine Hughes' objections to personhood 
theory as a justification for patent protection, as these objections are 
relevant to the discussion that follows. See, e.g., infra Section IV.C.1. 
(discussing non-appropriability of invention rights); infra Section IV.C.2. 
(discussing a cancelling or balancing approach to invention rights).

n277. See, e.g., Burlingame, supra note 41, at 6 (noting that 
"inventor-heroes had valuable assistants who, sometimes, were greater 
inventors than they").

n278. For a discussion of personhood interests in rental housing, see 
generally Radin, Market-Inalienability, supra note 233, at 1918-21; Radin, 
Residential Rent Control, supra note 233. For a criticism of the view that 
personhood interests in rental property should be recognized, see Timothy 
J. Brennan, Rights, Market Failure, and Rent Control: A Comment on Radin, 
17 Phil. & Pub. Aff. 66 (1988).

n279. Reliable indicia identify those personhood interests most likely to 
be essential to freedom, identity, and contextuality; less reliable indicia 
are likely to identify nonessential (though potentially justifiably 
constitutive) interests. Professor Radin's market-inalienability approach 
adopts the pluralist approach referred to earlier, see supra text 
accompanying note 245, by recognizing only the reliable indicia.

n280. But see Oddi, supra note 15 (proposing greater patent protection for 
"revolutionary" inventions).

n281. See supra note 272.

n282. A particularly striking example can be found in Edward J. Pershey, 
Drawing as a Means to Inventing: Edison and the Invention of the 
Phonograph, in Working at Inventing, supra note 41, at 101 (showing some of 
Edison's Matisse-like engineering line drawings and discussing the 
relationship between the drawings, the creative process of invention, and 
the invention itself).

n283. See, e.g., id.

n284. For examples of how the inventive process can be constitutive of 
personhood, see Vaughan, supra note 74, at 4 (" "The biographies of 
inventors give abundant illustrations of the state of inward happiness 
which comes from the exercise of the contriving bent.' ") (quoting Frank W. 
Taussig, Inventors and Money-Makers 15 (1930)). See also Bennett, supra 
note 20, at 26 (paraphrasing Thorstein Veblen: inventors create as a means 
of self-expression).

n285. Hughes approaches this point but, I think, misses it. He does note 
the popular identification of the inventor with the invention - Edison with 
the light bulb and Bell with the telephone - but fails to elaborate on the 
internal identification of inventor with invention. See Hughes, supra note 
149, at 344. This popular identification is, in fact, an inalienable 
interest. The original inventor remains identified on the patent even when 
the patent is assigned or transferred. In addition, this popular 
identification of an individual is typically lacking under the team-as-hero 
paradigm. Today, inventions are identified with firms, not with inventors:



Who invented the dial on your telephone and the machine switching behind 
it? Who invented the fluid drive or cellophane or Flit or the oil burner or 
florescent lights or nylon? ...

The best you can say is that General Motors invented this, or that another 
came out of the Bell Laboratories, but where is the hero?

Burlingame, supra note 41, at 4.

n286. See Radin, Market Inalienability, supra note 233, at 1855 ("We may 
decide that some things should be market-inalienable only to a degree, or 
only in some aspects.").

n287. By "employee inventions," I refer to those inventions that are not 
controlled by preinvention assignment agreements. This might include 
inventions conceived and reduced to practice during the employment 
relationship but before the preinvention assignment agreement became 
operative. Such inventions are increasingly rare, since most employees must 
now sign preinvention assignment agreements at the onset of the employment 
relationship. "Employee inventions" does not refer here to assigned 
preinventions that mature into inventions - that is, inventions that were 
conceived and reduced to practice during an employment relationship that 
was controlled by a preinvention assignment agreement. I refer here to such 
inventions as "preinventions," since I believe that the conditions under 
which they come into existence - preassigned to the employer - continue to 
characterize their nature after conception and reduction to practice.

n288. There are reasons for distinguishing preinventions from inventions 
other than the suspect nature of the decision to alienate. First, the 
preinvention could be conceived as still within the personality of the 
inventor while the invention is fully externalized in the patent claims and 
the embodiment. One is tempted to make comparisons to arguments calling for 
inalienability of gestational services (that is, payments for surrogate 
mothers). See, e.g., Radin, Market-Inalienability, supra note 233, at 
1928-36. However, this comparison fails since the embodiment - the 
resulting baby - would normally be thought of as even more inalienable than 
the surrogacy. Second, it might be the inventive process that is personal 
rather than the invention itself. If so, preinvention assignment agreements 
can be thought of as commodifying the process by usurping control from the 
employee-inventor in exchange for her wages. See, e.g., supra note 255 
(describing the highly commodified work on an automobile assembly line).

n289. See Radin, Market-Inalienability, supra note 233, at 1909-10. A 
prophylactic ban on total alienation of inventors' interests in their 
future invention is then the "best possible coercion-avoidance mechanism 
under conditions of uncertainty." Id. at 1910.

n290. Agreements to assign non-employee inventions not only are 
non-coercive for the same reasons that non-employee preinventions are, but 
are also knowingly made, for the inventor can identify precisely what it is 
that she is assigning.

Assignment of employee inventions are made knowingly for the same reasons 
that non-employee assignment of inventions are made knowingly. It is 
debatable whether employee assignment of inventions is coercive. The 
employee, of course, is free to end the employment relationship if the 
employer demands assignment; however, there is a coercive element to such a 
demand. On the other hand, the employee has the invention which the 
employer presumably wants, and thus may have some leverage to retain some 
personhood interest in the invention.

n291. Non-employee preinventions are rarely alienated, but presumably could 
be; that is, an independent inventor could agree with a firm that in return 
for specified consideration, any inventions conceived during a specified 
period would be assigned to the firm. Such "pre-creation" assignment is 
more familiar in other areas of intellectual property than in the area of 
inventions. For example, interests in books, films, and records are 
frequently assigned prior to creation. These types of deals differ from 
preinvention assignment in numerous respects. First, authors, film-makers, 
actors, and recording artists usually make such agreements as independent 
artists rather than as employees. Second, such artists typically retain 
significant interests in their creations. Third, such artists typically 
have the leverage to craft individualized agreements and thus the resulting 
contracts are not adhesive. Fourth, unlike with inventors, the artists' 
works are strongly identified with the artists.

A "pre-creation" assignment agreement would not be as suspect outside the 
employment context as it would be within, because the element of adhesion 
is lacking. This would be the case even if the inventor was under some form 
of general economic duress. The agreement likely would be crafted 
individually, and the inventor presumably would be able to negotiate the 
retention of some interest in the inventions with a prospective assignee. 
Moreover, in such a case, the personhood of the independent inventor would 
not have been diminished during the inventive process.

n292. See, e.g., Goldstein, supra note 270, at 359 ("To the chagrin of many 
observers today, the 1836 Act continues to provide the basic structure and 
principles of United States patent law.").

n293. Cuno Eng'g Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941).

n294. 35 U.S.C. 101-103 (1988).

n295. See Gamon, supra note 6, at 499-500.

n296. Pub. L. No. 98-622, 98 Stat. 3383.

n297. Section 116 provides in pertinent part:

Inventors may apply for a patent jointly even though (1) they did not 
physically work together or at the same time, (2) each did not make the 
same type or amount of contribution, or (3) each did not make a 
contribution to the subject matter of every claim of the patent.

35 U.S.C. 116 (1988). The legislative history of the amendment "recognizes 
the realities of modern team research. A research project may include many 
inventions. Some inventions may have contributions made by individuals who 
are not involved in other, related inventions." 1984 U.S.C.C.A.N. 5827, 5834.

n298. The amendment added the last sentence to 35 U.S.C. 103 (1988):

Subject matter developed by another person, which qualifies as prior art 
only under subsection (f) or (g) of section 102 of this title, shall not 
preclude patentability under this section where the subject matter and the 
claimed invention were, at the time the invention was made, owned by the 
same person or subject to an obligation of assignment to the same person.

Pub. L. No. 98-622, 103, 98 Stat. 3383, 3384 (1984).

n299. See Dratler, supra note 25, 2.043, at 2-103 to 2-104 (discussing the 
purpose of the 1984 amendments).

n300. See Gamon, supra note 6, at 502-10 and cases cited therein 
(discussing case developments in patent law).

n301. It is important to note that corporate patents have been advocated 
before. See, e.g., id. at 512-13.

n302. The wisdom of a corporate patent has been debated in the literature. 
See Sears, supra note 89 (arguing against corporate patents, largely on 
constitutional grounds); Gamon, supra note 6, at 512-13, 519-21 (advocating 
corporate patents). Sears' usage of the term "corporate patents" differs 
from that advocated here. She refers to a series of proposed reforms 
favoring team invention. Since Sears' article was written, some of the 
proposed reforms have been enacted. See supra notes 296-98 and accompanying 
text.

n303. The 1976 Copyright Act recognizes an economic basis of authorship 
that defines an author as the entity that finances the creation of the 
work. This basis is embodied in the Copyright Act as the "work made for 
hire" doctrine. According to the Act,

A "work made for hire" is -

(1) a work prepared by an employee within the scope of his or her 
employment; or

(2) a work specially ordered or commissioned for use as a contribution to a 
collective work ... if the parties expressly agree in a written instrument 
signed by them that the work shall be considered a work made for hire.

17 U.S.C. 101 (1988). The Act proceeds to state that

in the case of a work made for hire, the employer or other person for whom 
the work was prepared is considered the author for the purposes of his 
title, and, unless the parties have expressly agreed otherwise in a written 
instrument signed by them, owns all of the rights comprised in a copyright.

Id. 201 (b). Thus, copyright law recognizes by statute that corporations 
may be considered the authors of the works they finance. However, the scope 
of copyright protection is not precisely the same in all respects as for 
human authors. For example, due to the theoretically infinite corporate 
lifetime, copyright protection for works made for hire "endures for a term 
of seventy-five years from the year of its first publication, or a term of 
one hundred years from the year of its creation, whichever expires first," 
as opposed to the "life of the author and fifty years" duration of 
protection for works of human authorship. Id. 302(a), (c).

n304. The Semiconductor Chip Protection Act of 1984 (SCPA), id. 901-914, is 
a sui generis form of intellectual property protection for mask works fixed 
in semiconductor chip products. Under the SCPA, mask works created by 
employed designers are the property of the employer:

The "owner" of a mask work is the person who created the mask work, the 
legal representative of that person if that person is deceased or under a 
legal incapacity, or a party to whom all rights under this chapter of such 
person or representative are transferred in accordance with section 903(b); 
except that, in the case of a work made within the scope of a person's 
employment, the owner is the employer for whom the person created the mask 
work or a party to whom all the rights under this chapter of the employer 
are transferred in accordance with section 903(b).

Id. 901(a)(6).

n305. See Gamon, supra note 6, at 522-23.

n306. Though, admittedly, courts appear unlikely to do this sua sponte, 
without legislative prodding.

n307. 17 U.S.C. 101 (1988). This section is reproduced in pertinent part 
supra note 303.

n308. See Cal. Lab. Code 2870 (West 1992).

n309. By "anticipated result of corporate direction," I refer to specific 
management supervision of the inventive process. For example, if a manager 
(or any corporate agent) tells an engineer that a component is needed with 
specified characteristics and the engineer proceeds to develop such a 
component, and that component turns out to be a patentable device or 
employs a patentable process, and the engineer would qualify as an 
"inventor" under the present Patent Code, then I would designate such an 
invention a corporate invention. On the other hand, if while fulfilling the 
manager's request, the engineer conceives of an idea for an unrelated or 
peripherally related patentable invention, the invention would not be the 
anticipated result of corporate direction and would not qualify as a 
corporate invention. Note that "anticipated" as used here would not present 
a bar to patentability under the novelty or non-obviousness requirements of 
35 U.S.C. 102-103 (1988).

n310. See id. 135 (section authorizing interference actions). Interferences 
are ordinarily initiated to determine priority of invention, see id., but 
could be used or easily adapted to determine questions of corporate versus 
individual inventorship. The presumption of individual inventorship would 
be analogous to the current rebuttable presumption that the chronological 
order of filing dates is the order of actual invention. See 37 C.F.R. 1.657 
(1991).

n311. See Radin, Market-Inalienability, supra note 233, at 1854-55 (noting 
that inalienability can co-exist with encouragement of gift-giving).

n312. Patent pools are a means of linking the rights to use the patents 
issued to more than one patentee. See, e.g., United States v. Line Material 
Co., 333 U.S. 287, 313 n.24 (1948).

n313. See supra note 96 and accompanying text for a discussion of common 
law shop-rights.

n314. Professor Radin uses the example of certain noncommercial claims of 
landlords, such as those of landlords who live on the premises, that can 
offset or defeat a tenant's personhood interest in continuing to live in an 
apartment that she has made her home. See Radin, Residential Rent Control, 
supra note 233, at 359-60.

n315. In this case some other interest would have to be asserted by either 
the individual, the corporation, or both in order to justify the awarding 
of the property right.

n316. In this case the entity offering the more compelling interest would 
prevail.

n317. See Robert C. Clark, Corporate Law 675-76 (1986) (discussing the 
"meaning of corporate personality").

n318. See id. at 15-21 (discussing the economic efficiency of legal 
personhood).

n319. See Lon L. Fuller, Legal Fictions 12-14 (1967) (discussing the 
possibility that legal personhood is merely a convenient metaphor). 
Furthermore, Professor Dan-Cohen argues that corporations are merely 
"intelligent machines" that cannot enjoy the moral status and privileges of 
human persons. Dan-Cohen, supra note 55, at 49-51. For discussions on the 
personhood of another type of "intelligent machine," see Pamela Samuelson, 
Allocating Ownership Rights in Computer-Generated Works, 47 U. Pitt. L. 
Rev. 1185, 1199-200 (1986) (arguing computers should not be treated as the 
authors of computer-generated code). See generally Lawrence B. Solum, Legal 
Personhood for Artificial Intelligences, 70 N.C. L. Rev. 1231 (1992) 
(discussing the issues surrounding the possible treatment of an artificial 
intelligence as a legal person).

n320. See Dan-Cohen, supra note 55, at 96.

n321. See supra text accompanying note 239.

n322. See supra note 217.

n323. Courts sometimes confuse the legal fiction of the corporate person 
with personhood in the Hegelian sense. For example, early ecclesiastical 
courts sometimes punished corporate misbehavior with excommunication; the 
practice was banned by Pope Innocent IV in the 13th century on the grounds 
that a corporation, having no soul, could not lose one. See John C. Coffee, 
Jr., "No Soul to Damn: No Body to Kick": An Unscandalized Inquiry into the 
Problem of Corporate Punishment, 79 Mich. L. Rev. 386, 386 n.2 (1981).

n324. See, e.g., Boyle, supra note 265, at 1466.

n325. 17 U.S.C. 102(b) (1988) provides as follows: "In no case does 
copyright protection for an original work of authorship extend to any idea, 
procedure, process, system, method of operation, concept, principle, or 
discovery, regardless of the form in which it is described, explained, 
illustrated, or embodied in such work." For a general discussion of the 
idea/expression dichotomy, see Dratler, supra note 25, 5.012. For the 
common law origin of the doctrine, see Baker v. Selden, 101 U.S. 99 (1880).

n326. The scientific principles and mathematical formulas and algorithms 
that underlie an invention are not patentable, even if newly "discovered" 
by the inventor. See generally Dratler, supra note 25, 2.022 ("These things 
may be discovered by man, but they are not made by man.").

n327. 17 U.S.C. 902(c) (1988) provides as follows: "In no case does 
protection under this chapter for a mask work extend to any idea, 
procedure, process, system, method of operation, concept, principle, or 
discovery, regardless of the form in which it is described, explained, 
illustrated, or embodied in such work." For a general discussion of the 
idea/layout dichotomy, see Dratler, supra note 25, 8.034.

n328. See Radin, Property and Personhood, supra note 233, at 986-88 & 
n.102, 1005-06.

n329. See supra notes 246-47 and accompanying text.

n330. See supra notes 284-85 and accompanying text.

n331. Again, a purely subjective approach is not suggested here. Reliable 
indicia of reasonable, justifiable personhood interests must be present for 
the personhood interest to be protected.

n332. See supra notes 256-59 and accompanying text.

n333. The reverse shop-right has been proposed before, but as an 
instrumental tool rather than a normative protection of personal interests. 
See Hovell, supra note 6, at 887-88. At least one court has refused to 
award an employee a reverse shop-right in an employer-owned invention. See 
Mainland Indus., Inc. v. Timberland Mach. and Eng'g Corp., 649 P.2d 613 
(Or. Ct. App.), review denied, 653 P.2d 999 (Or. 1982), cert. denied, 460 
U.S. 1051 (1983). The Mainland court reasoned that while equity favored 
awarding employers a shop-right in employee-owned inventions, there were no 
such arguments in favor of the employee, as the employer rather than the 
employee had made the investment. This view has been disputed throughout 
this Comment, see, e.g., supra notes 72-80 and accompanying text, and 
elsewhere, see, e.g., Dratler, supra note 6, at 132-33. For commentary 
supporting the Mainland reasoning, see Mislow, supra note 6, at 76-77.

n334. The sanctions might have to be quite large and be imposed on the 
parties as well as their attorneys, since corporations could otherwise find 
it very profitable to squelch potential competitors through expensive 
litigation.

n335. See Roche Prods. v. Bolar Pharmaceutical Co., 733 F.2d 858, 863 (Fed. 
Cir.), cert. denied, 469 U.S. 856 (1984). This defense is narrowly 
construed and limited to philosophical inquiry, satisfaction of curiosity, 
or amusement. Id.

n336. Id.

n337. Of course, there may be valid policy rationales for extending 
experimental use protection to non-inventors.

n338. See, e.g., Radin, Property and Personhood, supra note 233, at 987 
("Perhaps the entrepreneur factory owner has ownership of a particular 
factory and its machines bound up with her being to some degree.").

n339. One commentator has discussed how such firms can be constitutive of 
personhood, even though commercial in nature, and why, in fact, the 
personhood interests contribute to their commercial success:

Inventor-entrepreneurs can foresee tangible personal rewards if they are 
successful. Individuals often want to achieve a technical contribution, 
recognition, power, or sheer independence, as much as money. For the 
original, driven personalities who create significant innovations, few 
other paths offer such clear opportunities to fulfill all their economic, 
psychological, and career goals at once. Consequently, they do not panic or 
quit when others with solely monetary goals might.

James B. Quinn, Managing Innovation: Controlled Chaos, Harv. Bus. Rev., 
May-June 1985, at 73.

n340. See generally Ubell, supra note 117; Hatfield, supra note 174.

n341. Judicial support of the doctrine has waxed and waned over the years. 
Assignor estoppel and the related doctrine of licensee estoppel were 
established in American patent jurisprudence in the mid-19th century. See 
Kinsman v. Parkhurst, 59 U.S. (18 How.) 289 (1855); see also Lear v. 
Adkins, 395 U.S. 653, 663-64 (1969) (discussing early applications of 
licensee estoppel); Rochelle C. Dreyfuss, Dethroning Lear: Licensee 
Estoppel and the Incentive to Innovate, 72 Va. L. Rev. 677, 684-85 (1986) 
(same); Hatfield, supra note 174, at 260 (discussing early applications of 
assignor estoppel). The doctrine was still alive in the mid-20th century, 
see Scott Paper Co. v. Marcalus Co., 326 U.S. 249 (1945), though by that 
time numerous exceptions had nearly swallowed the rule. See, e.g., Lear, 
395 U.S. at 664-68 (discussing exceptions to rule); Hatfield, supra note 
174, at 264-67 (same). The Court in Scott Paper, for example, declined to 
estop the defendant from claiming that the patent he had allegedly 
infringed was invalid as it was anticipated by prior art. Scott Paper, 326 
U.S. at 257. The decision was not uncontroversial, however. Justice 
Frankfurter wrote a vigorous dissent, noting that assingor estoppel "has 
been part of the fabric of our law throughout the life of this nation. It 
has been undeviatingly enforced by English speaking courts in this country, 
in England, in Canada, and Australia." Id. at 260 (Frankfurter, J., 
dissenting). Assignor estoppel was generally thought to have been abolished 
soon thereafter in Lear, 395 U.S. at 653 (abolishing licensee estoppel and 
criticizing "patent estoppel" generally), but was resurrected by the 
Federal Circuit in two recent cases: Diamond Scientific C. v. Ambico, Inc., 
848 F.2d 1220 (Fed. Cir.), cert. dismissed, 487 U.S. 1265 (1988) and 
Shamrock Technologies v. Medical Sterlization, 903 F.2d 789 (Fed. Cir. 1990).

n342. Lear, 395 U.S. at 668.

n343. See, e.g., Hatfield, supra note 174, at 273.

n344. See, e.g., Ubell, supra note 117, at 27-30. Ubell emphasizes that the 
employee-inventor is in no position to vouch for the patentability of any 
inventions she assigns to her employer - this is a question of law to be 
determined by the employer's patent attorney. Thus, the employee-inventor's 
oath and signature ought not to preclude her from later asserting that the 
patent is invalid. Id.

n345. Furthermore, even employers are arguably better off under the 
personhood defense. The assignor estoppel doctrine is subject to numerous 
exceptions. See supra note 341. If an exception applies to the facts of a 
particular case, the employer's patent may be found invalid. The employer 
has less to lose under the personhood defense approach. Even in those cases 
where the defense is operative, employer-patentees retain the right to 
exclude all but the employee-inventor from making, using, and selling the 
invention in question.

n346. See supra note 147 and accompanying text.

n347. See supra note 148 and accompanying text.

n348. See supra note 149 and accompanying text.

n349. Law, for example.

n350. Mark C. Suchman, Invention and Ritual: Notes on the Interrelation of 
Magic and Intellectual Property in Preliterate Societies, 89 Colum. L. Rev. 
1264, 1290-91 (1989).

n351. See Steven Greenhouse, Attention America! Snap out of It!, N.Y. 
Times, Feb. 9, 1992, 3, at 1 (detailing America's lack of productivity 
growth relative to that of Japan and Germany).

n352. See, e.g., Hatfield, supra note 174, at 251-55.

n353. See, e.g., William R. Greer, Foreign Students: Boon or a Threat?, 
N.Y. Times, Mar. 27, 1983, 12, at 72; Barbara Vobejda, Foreign Students 
Proliferate in Graduate Science Programs: Shortage of American Expertise 
Foreseen, Wash. Post, Sept. 2, 1987, at A1; Amy S. Wells, More Foreigners 
Are Seeking Ph.D.'s in U.S., N.Y. Times, July 20, 1988, at B6.

n354. The rate of private investment in research and development has also 
been of increasing concern. See, e.g., Stuart Auerbach, U.S. Firms Lag 
Japanese in Spending: Study Fuels Debate on Competitiveness, Wash. Post, 
June 29, 1990, at G2; William J. Broad, Japan Seen Passing U.S. in Research 
by Industry, N.Y. Times, Feb. 25, 1992, at B5. If, as has been discussed 
earlier, see supra note 201 and accompanying text, the efficacy of patent 
law generally in stimulating investment is debatable, then the effect of 
the retention of a non-exclusive, non-transferable right of an inventor to 
exploit her own invention would be minuscule. As has been noted in another 
context, "acceptance of a patent system by no means compels the conclusion 
that any subtraction from the bundle of patentee's rights is necessarily 
bad public policy." Donald F. Turner, The Patent System and Competitive 
Policy, 44 N.Y.U. L. Rev. 450, 458 (1969) (arguing for antitrust 
limitations on a patentee's licensing rights).