1 Conn. App. 422 | Conn. App. Ct. | 1983
This is an action to enforce a provision of an assignment contract wherein the defendant, Eugene Grzeika, was allegedly obligated to cede his patent and title rights to his invention of an improved glazier's tool over to the plaintiff, the Fletcher-Terry Company (Fletcher), his employer. The trial court declined to consider the issues relating to title to the invention and the enforceability of the contract provision pending a decision by the United States patent authorities concerning patent rights to the invention. The trial court, however, granted the defendant's request that the plaintiff pay all of the defendant's patent related expenses pursuant to another provision of the contract. The plaintiff appealed.1
The plaintiff, Fletcher, manufactures and sells glass cutting equipment and a variety of glazier's tools. The defendant was employed by Fletcher from October of 1958 until he voluntarily left the company in April of 1978. In 1970, the plaintiff adopted a company policy whereby certain employees were required to sign an "Employee Invention and Confidential Information Agreement" (agreement). By signing the agreement, an employee transferred to the plaintiff "[a]ll new contributions, suggestions or inventions conceived or made" by the employee relative to the plaintiff's business while working for the plaintiff.2 The defendant *424 signed this agreement in 1970 as, at that time, his position with the company brought him within the category of employees required to sign the agreement.
Early in 1977, the defendant invented a new type of magazine for a point driver, a type of hand tool used by the plaintiff. The plaintiff submitted a joint application to the United States Patent Office, naming the defendant and another employee, who had allegedly improved upon the defendant's concept, as joint inventors. The defendant refused to sign the application or to assign any rights to the plaintiff, while the other inventor complied with the terms of the agreement. The defendant then filed a patent application solely in his name after consulting with a privately retained patent attorney.3 The United States Patent Office then ordered an interference proceeding.4
The plaintiff brought this suit alleging that the defendant had breached the agreement and requesting the court (1) to declare the plaintiff the owner of the invention; (2) to compel the defendant to transfer ownership of the invention to the plaintiff; or (3) to issue a temporary or permanent injunction restraining the *425 defendant from assigning, transferring or abandoning his rights in the invention to anyone other than the plaintiff. A temporary injunction was issued by the trial court, Wright, J., on September 12, 1980, and a full hearing was subsequently held from April 13 through 15, 1981. On October 9, 1981, the court, Hon. John P. Cotter, state referee, adopted in full the prior decision of the court rendered on September 12, 1980, and granted a permanent injunction as requested by the plaintiff.5 The plaintiff's prayer for relief relating to a declaration of the plaintiff's ownership and the transfer of ownership to the plaintiff were left undecided; the court preferring to await the decision of the Patent Office before proceeding with the question of ownership. The injunction included an order for Fletcher to pay for all of the defendant's expenses incurred relative to settling his rights concerning the invention in question. The court found that the plaintiff was obligated to pay these expenses pursuant to paragraph three of the employee invention agreement.6
The issues on appeal are: (1) whether the trial court had jurisdiction to determine the question of title to the defendant's invention; (2) whether the trial court found the agreement valid and binding, in that the court ordered the plaintiff to pay the defendant's legal and other expenses pursuant to a provision of the agreement, *426 and (3) whether the terms of the agreement require the plaintiff, under the circumstances of the present case, to pay all of the defendant's expenses incurred relative to preserving his rights in connection with the invention.
Interference proceedings relative to the rights to a patent on the defendant's invention are merely collateral to the main issue in this case, which is whether or not Fletcher, under contract law, is entitled to all or the "entire rights" to the defendant's invention, thus including title, ownership, patent or any other rights concomitant with the invention. Thus, the enforceability of the contract is the primary issue.
State contract law is not preempted by federal law merely because intellectual property is in issue. See Aronson v. Quick Point Pencil Co.,
The "Employee Invention And Confidential Information Agreement" in the present case is an assignment contract which seeks to compel the signing employee to "assign to the company the entire rights to the new contribution, suggestions and invention . . . (Emphasis added.). The trial court found that it had "no basis or authority . . . upon which to support a determination of whether the defendant was the sole or joint owner of the invention in question." The plaintiff distinguishes the court's jurisdiction to determine ownership from the authority to determine who was the inventor. The plaintiff, in its brief to the trial court, conceded that "the question whether the defendant alone, or jointly . . . is entitled to be named as the `inventor' of the patent or patents described in the applications is solely under the jurisdiction of the Patent and Trademark Office, United States Code, Title 35; U.S. Constitution, Art.
A patent is considered personal property, the situs of which follows the person who is the owner. See 35 *428
It was unnecessary for the court to take this approach. The plaintiff was, of course, interested in who would eventually obtain the patent rights when issued, but the plaintiff's main concern, and thus the main issue to be addressed, was whether or not the assignment contract was enforceable. If the contract is enforceable, the plaintiff claims that it would be entitled to ownership rights in the invention and patent rights or title to the patent when and if a patent is granted.
The courts of this state have determined that an agreement to assign an invention and patent rights is a proper subject for specific performance. New Haven Sand Blast Co. v. Dreisbach,
In Transparent Ruler Co. v. C-Thru Ruler Co.,
In Plastic Metal Fabricators, Inc. v. Roy,
The factual situation here is analogous. The plaintiff's cause of action is for a wrongful breach of a contractual, rather than confidential, relationship which similarly is a matter independent of the patent laws. See New Marshall Engine Co. v. Marshall Engine Co.,
As we have determined that the Superior Court has jurisdiction to determine the enforceability of an assignment contract, a resolution of this issue will resolve the related issues of ownership of the invention and the patent if and when issued. This case, therefore, must be remanded to decide the issue of the enforceability of the assignment contract.
As to whether the plaintiff, pursuant to the agreement, must pay all of the defendant's expenses incurred in connection with the invention, it must preliminarily be determined whether the contract is enforceable. The trial court, without addressing the enforceability of the entire contract, found that paragraph three of the agreement was enforceable. Paragraph three states in part: "The Company shall pay all expenses incurred in the obtaining or preservation of patents (or other legal protection) in connection with such inventions, suggestions or contributions."
"The intention of the parties to a contract is to be determined from the language used interpreted in the light of the situation of the parties and the circumstances *431
connected with the transaction." E F Construction Co. v. Rissil Construction Associates, Inc.,
In the present case, the defendant sought to have the plaintiff pay for all of his expenses incurred in proceedings and conduct designed to deny the plaintiff's rights to ownership or patent rights in the defendant's invention. Paragraph three is unclear in this regard. We cannot accept the claim that the plaintiff, in drawing up this contract, intended to be contractually responsible for paying all expenses incurred by an employee who seeks to deprive the company of its rights to an assignment. Such an interpretation of this provision would encourage all employees to breach the contract and contest its enforceability with the knowledge that such action would cost the employee nothing.
The court in this case made no factual findings concerning the intent of the parties. The court merely stated that pursuant to paragraph three, the plaintiff was responsible for the defendant's costs. Contracts are to be construed as a whole and all relevant provisions should be construed together. Lanna v. Greene,
Thus, we conclude that even if the assignment contract is found to be enforceable upon remand, the court erred in holding that paragraph three entitled the defendant to payment for all fees and expenses incurred while attempting to circumvent or avoid altogether his contractual obligations. Whether or not the defendant would be entitled to attorney's fees under some alternative theory is not an issue to be considered at this time.
There is error, the judgment is set aside and the case is remanded with the direction to determine the enforceability of the contract and, if found to be enforceable, to grant specific performance of the agreement not inconsistent with this opinion.
In this opinion the other judges concurred.