I am a first time patent co-author.

The patent assignment contains the following:

"the assignors hereby covenant with the Assignee that they shall, at the cost of the Assignee, execute all further documents and do all such things that may be requested by the Assignee and as are necessary for the purpose of enabling the Assignee to make application in its own name in any country of the world for letters patent, design registration and/or similar protection in respect of the said Invention."

Two things make me uncomfortable, firstly I seem to be committing to an unlimited obligation to assist the company.

Secondly, "do all such things" seems crazy. Am I supposed to assist with bribery in a country where such a practice is common or worse assassination?

Does the above stipulation seem normal?

  • 1
    "for the purpose of enabling the Assignee to make application" Would seem to me that your obligation stops at the point at which they can make an application, it does not obligate you to develop the idea or assist in the actual application process (just that they "can make an application"). It doesn't say anything about the application being patentable or assisting with office actions, as soon as they make the application, you are no longer required to do anything. – Ron Beyer Apr 17 '18 at 18:27

This provision is common in assignment agreements for patent applications. You are promising to help the Assignee obtain intellectual property rights, such as patents. The promise to "do all such things" is limited to those that are necessary to enable the Assignee to obtain IP protection. Even if the promise to act wasn't limited, a contract requiring you to perform illegal actions such as bribery/fraud/murder would be unenforceable.

  • Technically, a contract for illegalities is not unenforceable, it’s void. – Dale M Apr 17 '18 at 21:29

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