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best interests could create an obligation to assign a patent. Such
an obligation could also arise under the "alter ego" theory where
the corporate officer completely dominates the affairs of the
corporation. A corporation could also derive an ownership interest
where there is an implied contractual relationship for the
inventor/employee to assign an interest in a patent to the
corporation. Additionally, when an employee is specifically hired
to devote his efforts to a particular problem, any invention that
results from the performance of that work belongs to the employer
pursuant to the "hired to invent" doctrine. Finally, although not
as strong as an actual ownership interest, a corporation that has
gained "shop rights" in an invention is entitled to a royalty-free,
nonexclusive license to practice the invention; i.e., where an
employee conceives and perfects an invention during the hours of
employment, working with the employer's materials and appliances.
After examining the relevant facts, Mr. Lutzker determined that
Powertex owned the Amoco patents because of the obligations of the
Podds as corporate officers, because the Podds agreed to assign the
patents, and because the Podds were hired to invent. Alternatively,
Mr. Lutzker determined that Powertex at least had shop rights in the
patents which allowed it to use the patents without paying any
royalties.
Turning to the issues of validity and enforceability, Mr.
Lutzker explained that a patent is invalid if the claimed invention
is not new or it is obvious in light of the knowledge in the
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