Wow, the Federal Circuit seriously narrowed the scope of some patent assignments.
The Federal Circuit held that a 2007 patent assignment covering “divisions, reissues, continuations, and extensions” did not include continuation-in-part (CIP) applications. The court based its decision on standard contract interpretation principles, emphasizing that it could not insert terms—like “continuations-in-part”—that the parties did not explicitly include.
The panel highlighted that “continuations” and “CIPs” have long been treated as distinct in patent law: continuations cannot add new matter, while CIPs can, and this difference has practical and legal consequences for patent ownership and recordation.
The opinion contrasts with University of New Mexico v. Knight (2003), where similar assignment language was held to include CIPs. The court distinguished Knight because that case involved additional agreements with broad language transferring ownership of “all related patents.”
While the panel’s analysis was clear, commentators noted it was somewhat formalistic, ignoring functional issues like potential “gamesmanship” — where a drafter might add nominal new material to refile as a CIP and thereby alter ownership.
Ultimately, the ownership dispute was moot because the related patent claim had already been found invalid for obviousness in a companion IPR proceeding.