B-180707, MAR 5, 1974, 53 COMP GEN 653

B-180707, MAR 5, 1974, 53 COMP GEN 653

PATENTS - ASSIGNMENT - INTENT OF PARTIES NOT EXPRESSED - CORRECTION THE ASSIGNMENT TO THE GOVERNMENT OF THE FULL DOMESTIC RIGHTS TO AN INVENTION DEVELOPED BY A PRIVATE FIRM UNDER A GOVERNMENT CONTRACT MAY BE CORRECTED ON THE BASIS OF MUTUAL MISTAKE OF FACT TO CONFORM TO THE INTENT OF THE PARTIES, AS EVIDENCED BY THE PREEXISTING CONTRACT THAT THE DOMESTIC TITLE VEST JOINTLY. TO ACCOMPLISH THIS, A CORRECTED ASSIGNMENT EXECUTED BY THE PARTIES SHOULD BE REFILED.

IN THE MATTER OF DEPARTMENT OF THE INTERIOR, MARCH 5, 1974:

AN INVENTION, ENTITLED "USE OF CARBON MONOXIDE AND STEAM IN THE SOLVENT REFINED COAL PROCESS," WAS DEVELOPED BY EMPLOYEES OF THE PITTSBURG & MIDWAY COAL MINING CO. (PITTSBURG) UNDER CONTRACT NO. 14-01 0001-496 WITH THE DEPARTMENT OF THE INTERIOR (GOVERNMENT). AS AN INCIDENT OF EMPLOYMENT, THE INVENTORS WERE REQUIRED TO ASSIGN THE INVENTION TO PITTSBURG. BY VIRTUE OF ARTICLE III A(2)(A) OF CONTRACT 496, DOMESTIC TITLE TO THE INVENTION WAS TO BE HELD JOINTLY BY PITTSBURG AND THE GOVERNMENT.

APPLICATION FOR LETTERS PATENT, SERIAL NO. 297,093, WAS FILED OCTOBER 12, 1972, BY PITTSBURG. THEREAFTER, AN ASSIGNMENT OF INTEREST PREPARED BY THE GOVERNMENT AND EXECUTED ON NOVEMBER 6, 1972, BY THE INVENTORS AND PITTSBURG, WAS RECORDED IN THE UNITED STATES PATENT OFFICE ON NOVEMBER 16, 1972 (REEL 2909, FRAME 892, 893). WITH RESPECT TO DOMESTIC PATENT RIGHTS, THE ASSIGNMENT PROVIDED THAT PITTSBURG DID SELL, ASSIGN AND TRANSFER TO THE GOVERNMENT THE ENTIRE DOMESTIC RIGHT, TITLE AND INTEREST IN THE INVENTION SUBJECT TO RETENTION BY PITTSBURG OF A ROYALTY-FREE, NONEXCLUSIVE LICENSE IN ACCORDANCE WITH THE TERMS OF CONTRACT 14-01-0001- 496.

ON FEBRUARY 15, 1974, PITTSBURG NOTIFIED THE GOVERNMENT THAT THE ASSIGNMENT WAS IN ERROR AND REQUESTED THAT IT BE REFORMED TO REFLECT THE TERMS OF CONTRACT 14-01-0001-496, I.E., THAT THE DOMESTIC RIGHTS BE HELD JOINTLY BY PITTSBURG AND THE GOVERNMENT. THE REQUESTS FOR AUTHORITY TO REFORM THE ASSIGNMENT WAS REFERRED TO GAO BY LETTER DATED FEBRUARY 22, 1974, FROM THE DEPUTY ASSISTANT SECRETARY OF THE INTERIOR.

35 U.S.C. 261 PROVIDES THAT PATENTS SHALL HAVE ATTRIBUTES OF PERSONAL PROPERTY AND THAT APPLICATIONS FOR PATENTS, OR ANY INTEREST THEREIN SHALL BE ASSIGNABLE IN LAW BY AN INSTRUMENT IN WRITING. AN ASSIGNMENT IS THE ONLY MEANS BY WHICH LEGAL TITLE OF A PATENT PASSES. MARSHALL V. COLGATE- PALMOLIVE-PEET CO., 175 F.2D 215 (1949). IN THIS CASE, THE ASSIGNMENT WAS INTENDED TO BE THE WRITTEN EVIDENCE OF THE DISCHARGE OF THE CONTRACT OBLIGATION THAT DOMESTIC TITLE TO THE INVENTION WOULD VEST JOINTLY WITH PITTSBURG AND THE GOVERNMENT. THE ACTION PROPOSED WOULD CONFORM THE ASSIGNMENT OF RECORD TO THE ACTUAL INTENT OF THE PARTIES AS CLEARLY EXPRESSED IN THE CONTRACT. THEREFORE, OUR OFFICE WILL NOT OBJECT TO THE PROPOSED CORRECTION. SEE NICHOLSON PAVEMENT COMPANY V. JENKINS, 81 U.S. 452 (1871); BALDWIN V. NATIONAL HEDGE & WIRE-FENCE CO., 73 F. 574 (1896). IN THIS VEIN, WE BELIEVE THAT THE PROPER COURSE OF ACTION SHOULD BE THE REFILING OF A CORRECTED ASSIGNMENT, EXECUTED BY THE PARTIES. CONCERNING THE PROPOSED FORM OF THE CORRECTED ASSIGNMENT, INFORMAL CONSULTATION WITH AN ASSOCIATE SOLICITOR OF THE PATENT OFFICE LEADS US TO BELIEVE THAT REFERENCE TO THE PRIOR AGREEMENT AND A STATEMENT COVERING THE REASON FOR THE CORRECTION SHOULD BE INCLUDED IN, OR APPENDED TO, THE CORRECTED ASSIGNMENT.