Preston v. Marathon Oil Co., 277 P.3d 81

Preston, an at-will employee of Marathon, agreed to assign all Intellectual Property to Marathon via the April 2001 Employee Agreement; no separate consideration beyond continued at-will employment was provided.
The IP definition covers inventions conceived during employment and within one year after termination presumed to be during employment.
The dispute centers on ownership of the '764 and '385 patents arising from Preston's and Smith's work at Marathon.
Wyoming law governs the contract, and the district court held the April 2001 agreement valid and enforceable to assign Preston's IP rights.
There is mixed authority nationwide on whether continued at-will employment constitutes adequate consideration for post-employment IP assignments, leading to the certified question.
The Wyoming Supreme Court ultimately answers yes, continued at-will employment is sufficient consideration for IP assignment.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether continued at-will employment constitutes adequate consideration for an IP assignment	Preston argues additional consideration is required	Marathon contends continued at-will employment is sufficient	Yes; continued at-will employment is adequate consideration

Hopper v. All Pet Animal Clinic, Inc., 861 P.2d 531 (Wyo. 1993) (not to subject IP assignments to separate consideration constraints like covenants)
Goodyear Tire & Rubber Co. v. Miller, 22 F.2d 353 (9th Cir. 1927) (continued employment sufficient to support patent assignment)
Harsco Corp. v. Zlotnicki, 779 F.2d 906 (3d Cir. 1985) (patent assignment differs from covenants not to compete; consideration issue analyzed)
MAI Basic Four, Inc. v. Basis, Inc., 880 F.2d 286 (10th Cir. 1989) (patent assignments do not require separate consideration; distinguish from restrictive covenants)
Hebbard v. American Zinc, Lead & Smelting Co., 161 F.2d 339 (8th Cir. 1947) (continued employment alone not sufficient for certain assignments)