How to Find Patented Gold Claims for Sale

A mining claim gives a claimant the right to remove mineral deposits that are discovered on a parcel of land. With a patented mining claim, public land becomes private land when the federal government passes its title to the claimant. States may have laws that complement the federal mining law.

If you purchase a patented gold claim, you have exclusive title to the locatable minerals and the surface and other resources. Therefore, you own the land as well as the minerals. Locatable minerals include both metallic minerals like gold, lead and silver and nonmetallic minerals like asbestos, fluorspar and mica. You can keep any minerals that you find, not just gold. While you may use the surface for mining your property, it is illegal to build a structure for purposes other than mining.

Difference Between Patented and Unpatented Mining Claims

A patented mining claim may have been staked as far back as the 1800s. Since you own the land when you have a patented claim, you can deny anyone access. If your claim is within a land package under development by a mining company, you can say no to a sale. Since historical data exists for patented claims, you’ll have an idea of what was mined and the size of the mine. Unpatented mining claims are advantageous because the owner has no liability for incidents on the land and more minerals may be found since the land has not been explored.

Staking a Mining Claim

A claim can be staked on much of the federal public lands. Usually, a claim can’t be staked on wilderness areas, national monuments, wild portions of wild and scenic rivers, national parks, and campgrounds. To stake a claim, you need to fill out the proper mining form and file your claim. Bureau of Land Management offices can sell you a mining claim packet. Be sure to use a United States Geological Survey topographic type map as you go through the decision-making process.

Location of a Gold Mining Claim

Whether you visit the actual site or look at photos, you’ll want to note the quality of campsites, road access, rivers, streams, gravel deposits, bedrock exposures and general topography of a potential mining claim. Remember that you’ll need an adequate source of water when mining for gold. It is sometimes best to search for gold where it has been found in the past. Streams often hide gold, and you may be able to find a trail to the source.

Finding Patented Gold Claims for Sale

According to the Bureau of Land Management, you may locate a mining claim or site on federally-administered lands in 19 states. Numerous websites facilitate a search for patented gold claims with lists of available parcels of land that are for sale. The Code of Federal Regulations Title 43 Part 3832 is a good resource. You’ll also find valuable information on prospecting from the Gold Prospectors Association of America.

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Patent Assignments in Employment Agreements – a Sometimes Overlooked, but Always Important Component

  • November 16, 2021

By: Peter C. Lando and Thomas P. McNulty

By: Thomas McNulty and Peter Lando, with assistance from summer intern Tyler Gruttadauria

Businesses, of course, have a strong interest in owning intellectual property created by their employees. Intellectual property—patents, copyrights, and other confidential and proprietary information including trade secrets—is often the most valuable asset a business can own, so it is important to ensure that employee developments and inventions belong to the employer. In the United States, inventions presumptively belong to the inventor, and any transfer of ownership (“assignment”) must be in writing to be effective. Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer rights in inventions made by the employee during the period of employment. These assignment clauses are often treated as mere boilerplate, yet the precise wording of these clauses can have major impacts on the effectiveness and limitations of any assignment.

Ensure that you have an Assignment and not a mere promise to assign

When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as “hereby assign,” “agrees to grant and does hereby grant,” or that inventions “shall belong” to the employer and employee “hereby conveys, transfers and assigns” have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made. Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property (“IP”) covering the invention. Terms such as “will assign,” “agree to assign,” “will be assigned,” and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.

In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee’s prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee’s work from being swept into the assignment provision. A broad, non-specific carve-out clause may prevent an employee agreement from automatically assigning inventions of that employee, even where the assignment clause includes the proper “hereby assign” type of language, because this leaves open the possibility that an invention is not subject to the assignment clause. This contrasting language may create an ambiguity in the employment agreement that subjects it to construction under state law, which in turn may allow for the employee to introduce extrinsic evidence, such as conversations that took place during employment negotiations, to defeat the automatic assignment. While patent assignment provisions are governed by Federal Circuit law, resolution of contractual ambiguities is governed by state law, which varies considerably regarding the admissibility of such extrinsic evidence.

Failure to obtain an automatic assignment can have negative consequences

An assignment clause that is deemed ineffective to automatically transfer ownership of an invention can create significant problems for an employer. In such circumstances, a business would not have standing to bring a patent infringement suit until it has taken the necessary steps to obtain a valid assignment. This may require the filing of a breach of contract claim against the employee to require fulfillment of the contractual obligations, including execution of assignment documents. In the interim, infringers could continue practicing the invention; and if the infringing activity has gone on long enough, the six-year statute of limitations may prohibit full recovery of damages. Further, if an inventor/employee has made only a promise to assign, and instead transfers ownership to a third party who lacks knowledge of the assignment obligation, that second transfer of ownership may well prevail, leaving the original employer with no exclusionary rights at all.

Ineffective assignment provisions can affect more than just litigation. Businesses and investors typically conduct IP due diligence when entering into transactions involving the investment in or sale of IP assets, company divisions or entire entities, and any weaknesses in assignment provisions may affect the perceived value of the IP assets and/or business being considered.

Do not count on the “Hired-to-Invent” doctrine to result in ownership of employee inventions

Some employers do not require employees to sign an agreement containing an assignment of inventions because they believe that they automatically own inventions that they paid someone to create. Under the “hired-to-invent” doctrine, this will only occasionally be correct. Employees or contractors hired (and paid) specifically to create a particular invention or to solve a particular problem may be deemed to have implicitly assigned their rights in the invention to the employer. This is a highly fact-based determination, however, and applies only to inventions created in response to the specific thing the employee was hired to do. A mere title of “researcher” or even “inventor” will not, standing alone, suffice to ensure ownership of inventions by the employer. Further, until a court has ruled one way or the other, an employer relying on this doctrine will not have any certainty in its rights to the invention. Should the court rule against the employer, it would lose the exclusionary rights it believed it possessed and may face an infringement lawsuit from the employee or anyone to whom the employee may have assigned the invention/patent rights.

Absent an effective assignment, an employer may obtain limited “shop rights” in inventions made using the employer’s time, materials, facilities or equipment. Shop rights take the form of an implied license to practice the invention, precluding the employee from obtaining damages or injunctive relief on a patented invention. Shop rights are limited, however, and do not allow the employer to prevent others from competing by practicing the invention. Further, shop rights cannot be transferred via license or assignment, effectively devaluing the IP assets and, perhaps, the company.

Other Considerations

In addition to having the proper “hereby assign” language, employment contracts should ensure that inventions , rather than just patents or patent applications, are subject to the assignment clause. Language stating that all inventions, improvements, discoveries, and the like, whether or not patentable or copyrightable, are subject to the assignment, ensures that information that could be protected through other regimes, such as trade secrets, automatically become the property of the employer.

Intellectual property has taken on an ever-increasing role in determining the value of a business. A company’s ability to develop and protect its intellectual property is a key factor in its future success. Given this, it is important that businesses recognize that assignment provisions of employment agreements are not mere boilerplate, but instead may be one of the most important legal provisions that ultimately can impact not only an employment arrangement, but the value of the business itself.

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  • Peter C. Lando
  • Thomas P. McNulty

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Patent Assignments in Employment Agreements – A Sometimes Overlooked, but Always Important, Component Intellectual property is often the most valuable asset a business can own.

By Peter Lando and Thomas McNulty • Dec 20, 2021

Opinions expressed by Entrepreneur contributors are their own.

Businesses, of course, have a strong interest in owning intellectual property created by their employees. Intellectual property — patents, copyrights and other confidential and proprietary information including trade secrets — are often the most valuable assets a business can own, so it is important to ensure that employee developments and inventions belong to the employer. In the United States, inventions presumptively belong to the inventor, and any transfer of ownership (assignment) must be in writing to be effective. Rather than requiring employees to sign assignment agreements for each patent application filing, employers sometimes rely on employment agreements and handbooks to establish ownership in intellectual property created by an employee. Employers often provide employment agreements with assignment clauses that are intended to give the employer rights in inventions made by the employee during the period of employment. These assignment clauses are often treated as mere boilerplate, yet the precise wording of these clauses can have major impacts on the effectiveness and limitations of any assignment.

Ensure that you have an assignment and not a mere promise to assign

When drafting an agreement to have an employee assign future inventions, it is vital that the language used in an assignment clause states a present-tense, actual assignment. Phrases such as hereby assign, agrees to grant and does hereby grant or that inventions shall belong to the employer and employee hereby conveys, transfers and assigns, have been deemed by the courts to be effective to transfer ownership of a future invention without the need for any subsequent agreement. Ownership effectively transfers immediately, once the invention has been made.

Assignment clauses that use future tense language, on the other hand, generally will require an additional agreement to result in a transfer of ownership of the invention, and any intellectual property ("IP") covering the invention. Terms such as will assign, agree to assign, will be assigned and the like, have been found by numerous courts to constitute nothing more than a promise or contract to assign an invention in the future, but not to serve as an actual assignment.

In addition to the wording used in the assignment clause, the language of any carve-outs should also be scrutinized. Agreements may contain a carve-out clause to exclude a new employee's prior inventions from being assigned, or to prevent assignment of inventions unrelated to the employee's work from being swept into the assignment provision. A broad, non-specific carve-out clause may prevent an employee agreement from automatically assigning inventions of that employee, even where the assignment clause includes the proper hereby assign type of language, because this leaves open the possibility that an invention is not subject to the assignment clause. This contrasting language may create an ambiguity in the employment agreement that subjects it to construction under state law, which in turn may allow for the employee to introduce extrinsic evidence, such as conversations that took place during employment negotiations, to defeat the automatic assignment. While patent assignment provisions are governed by Federal Circuit law, resolution of contractual ambiguities is governed by state law, which varies considerably regarding the admissibility of such extrinsic evidence.

Failure to obtain an automatic assignment can have negative consequences

An assignment clause that is deemed ineffective to automatically transfer ownership of an invention can create significant problems for an employer. In such circumstances, a business would not have standing to bring a patent infringement suit until it has taken the necessary steps to obtain a valid assignment. This may require the filing of a breach of contract claim against the employee to require fulfillment of the contractual obligations, including execution of assignment documents. In the interim, infringers could continue practicing the invention; and if the infringing activity has gone on long enough, the six-year statute of limitations may prohibit full recovery of damages. Further, if an inventor/employee has made only a promise to assign, and instead transfers ownership to a third party who lacks knowledge of the assignment obligation, that second transfer of ownership may well prevail, leaving the original employer with no exclusionary rights at all.

Ineffective assignment provisions can affect more than just litigation. Businesses and investors typically conduct IP due diligence when entering into transactions involving the investment in or sale of IP assets, company divisions or entire entities, and any weaknesses in assignment provisions may affect the perceived value of the IP assets and/or business being considered.

Related: The How-To: Protecting Your Intellectual Property As A Small Business

Do not count on the hired-to-invent doctrine to result in ownership of employee inventions

Some employers do not require employees to sign an agreement containing an assignment of inventions because they believe that they automatically own inventions that they paid someone to create. Under the hired-to-invent doctrine, this will only occasionally be correct. Employees or contractors hired (and paid) specifically to create a particular invention or to solve a particular problem may be deemed to have implicitly assigned their rights in the invention to the employer. This is a highly fact-based determination, however, and applies only to inventions created in response to the specific thing the employee was hired to do. A mere title of researcher or even inventor will not, standing alone, suffice to ensure ownership of inventions by the employer. Further, until a court has ruled one way or the other, an employer relying on this doctrine will not have any certainty in its rights to the invention. Should the court rule against the employer, it would lose the exclusionary rights it believed it possessed and may face an infringement lawsuit from the employee or anyone to whom the employee may have assigned the invention/patent rights.

Absent an effective assignment, an employer may obtain limited shop rights in inventions made using the employer's time, materials, facilities or equipment. Shop rights take the form of an implied license to practice the invention, precluding the employee from obtaining damages or injunctive relief on a patented invention. Shop rights are limited, however, and do not allow the employer to prevent others from competing by practicing the invention. Further, shop rights cannot be transferred via license or assignment, effectively devaluing the IP assets and, perhaps, the company.

Other considerations

In addition to having the proper hereby assign language, employment contracts should ensure that inventions, rather than just patents or patent applications, are subject to the assignment clause. Language stating that all inventions, improvements, discoveries and the like, whether or not patentable or copyrightable, are subject to the assignment, ensures that information that could be protected through other regimes, such as trade secrets, automatically become the property of the employer.

Related: Securing Your IP: The Two Key Legal Documents Every UAE ...

Intellectual property has taken on an ever-increasing role in determining the value of a business. A company's ability to develop and protect its intellectual property is a key factor in its future success. Given this, it is important that businesses recognize that assignment provisions of employment agreements are not mere boilerplate, but instead may be one of the most important legal provisions that ultimately can impact not only an employment arrangement, but the value of the business itself.

Related: Top 5 Intellectual-Property Challenges Businesses Face

*The authors would like to thank Lando & Anastasi summer intern Tyler Gruttadauria for his contributions to this article.

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employment patent assignment

Written by: Stephen C. Hall

Under U.S. law, an inventor on a patent or patent application owns the patent rights, unless there is a contract assigning the rights to another owner.  Against this framework, a recent case before the Federal Circuit Court of Appeals hinged on whether an employment contract, executed at the beginning of a University researcher’s employment, created an automatic assignment of his later-patented diagnostic device. [1]   As discussed in more detail below, this case offers important lessons on the type of language that employers and universities should use in their employment agreements and the steps to take when employees invent patentable subject matters.

If the researcher had retained the patent rights to his invention, then he also had retained the ability to convey those rights at a later time to Omni MedSci, Inc. (“Omni”), the subsequent patent owner who sued Apple Inc. (“Apple”) for infringement.  However, if the researcher had transferred his rights to his University employer, as Apple contended, then Omni could not and did not own the patent rights.  In that case, Omni would lack standing to assert the patent rights, and Apple would be entitled to a dismissal of the case. 

The researcher’s employment contract, combined with certain University bylaws, provided the only contract language raised by Apple to support its contention.  Thus, this case turned on whether any future invention rights were automatically conveyed by the contract entered into at the beginning of the employment. 

This determination, of course, depended on the specific wording of the employment contract.  Apple argued that in his employment contract, the researcher had agreed to abide by all University rules, regulations, and bylaws.  Apple specifically pointed to language contained in Bylaw 3.10, Paragraph 1, which stated in relevant part that “[p]atents … issued or acquired as a result of or in connection with administration, research, or other educational activities conducted by members of the University staff and supported directly or indirectly … by funds administered by the University … shall be the property of the University.”  (Emphasis added.) 

Apple contended that this language automatically conveyed legal title to the patent rights at issue to the University, leaving the inventor no rights in the invention for him to have assigned to Omni in the first place.  Consequently, according to Apple, Omni lacked standing to assert these patent rights against Apple because the phrase, “shall be the property of the University” in Bylaw 3.10, Paragraph 1, effectuated an automatic conveyance to the University, preventing any subsequent conveyance to Omni. 

The Court, however, disagreed.  Under controlling law, a patent assignment clause like the one at issue can be categorized in at least two ways. [2]   It either can be a present, automatic assignment of a future invention, or it can be merely a promise to assign patent rights to the invention in the future.  In the former case, no further acts are necessary to effectuate the assignment.  In the latter case, however, involving a future promise to assign, a further act is necessary to convey ownership, namely the execution of an assignment in the future when there is an invention to assign. 

The Court determined that this case presented a future promise to assign, because Bylaw 3.10, Paragraph 1 did not result in a present and automatic conveyance at the time of its execution.  The Court reasoned that a present and automatic conveyance of patent rights only could occur, if at all, upon a condition being met, namely that the research leading to a later invention had been “supported directly or indirectly … by funds administered by the University.”  However, Bylaw 3.10, Paragraph 4 addressed the exact opposite condition and result, namely that there also could be certain patent rights “resulting from activities which have received no support, direct or indirect , from the University [which] shall be the property of the inventor ….” (Emphasis added.)

The Court observed in a footnote that the disposition of Apple’s motion did not require a finding about whether there had been support or had not been support by the University.  Rather, the opposite results that could arise between these two similarly structured paragraphs meant that Bylaw 3.10 could be a promise of a future transfer (Paragraph 1), or it could be a relinquishment allowing the researcher to own a future invention (Paragraph 4), but the result could only be known well after employment began, allowing enough time for the determination of whether University funds had been used.  Stated differently, because it would be well after employment began before one could know if a Paragraph 1 situation or a Paragraph 4 situation was presented, the Court held that the researcher’s employment contract could not have created a present and automatic transfer of his invention.

As a result, the conveyance during the researcher’s employment to Omni was a valid transfer. This made Omni the assignee of the asserted patent rights, giving Omni standing to assert its action against Apple.  

In terms of practical lessons, this case raises important considerations for all employers, including universities.  As the holding by the Supreme Court in Roche also reflected, verb tense in employment contracts is a significant consideration.  In an employment agreement, the phrases “shall be the property” or, in the Roche case, “shall assign,” are actually much different and likely to be less effective than language saying the researcher “hereby does assign” all future inventions.  In employment agreements, the “and hereby does assign” phrasing is better than the language at issue in this case.  In addition, instead of relying on an employment agreement and any attendant policies, handbooks, bylaws, or the like, it generally will be preferred to obtain a specific assignment from every inventor whenever a university or company claims ownership of new technology.

[1]   Omni MedSci, Inc. v. Apple Inc., 2021 WL 3277220 (Fed. Cir., August 2, 2021); available publicly at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1715.OPINION.8-2-2021_1812582.pdf .

[2] Bd. Of Trustees of Leland Stanford Jr. Univ. v. Roche Mol. Sys., Inc. , 563 U.S. 776, 786 (2011)(“ Roche ”).

employment patent assignment

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Patent Invention Assignment Between Former Employee/Employer

patent invention

Patent assignment agreements are made between employers and employees for invention patents . These agreements usually happen in instances when an employee is developing a patent invention with the employer’s resources and may sign an agreement signing over the rights of the patent invention to the employer.

But patent assignment agreements between employer and employee don’t come without complications. An employee may choose to resign from their position or leave due to any reason during the development of the product. When the employee leaves the company, the information and trade secrets related to the invention belong to the employer. Therefore, it cannot be shared or sold to competitors of the future employer.

This may have a negative impact on the former employee seeking new employment as a new company would be hesitant to hire him. Therefore, California’s law under the Business and Professions Code section 16600 states: 

“Every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.”

According to this law, any contracts between the employer and the employee will be void if they hinder the employee from practicing his profession legally. This law puts the former company’s trade secrets at risk if the employee reveals them to his new employer. 

However, the California Uniform Trade Secret Act states :

“A court shall preserve the secrecy of an alleged trade secret by reasonable means, which may include granting protective orders in connection with discovery proceedings, holding in-camera hearings, sealing the records of the action, and ordering any person involved in the litigation not to disclose an alleged trade secret without prior court approval.”

The above law dictates that the trade secrets of a company cannot be disclosed without court approval, thus, protecting the rights of the employer. 

The following case demonstrates the use of the above laws and how they affected the court’s ruling on a patent invention agreement. 

Applied Materials, Inc. v Advanced Micro-Fabrication Equipment Co

Applied made employees sign a patent invention agreement that stated that all inventions conceived within one after the termination of the employment contract belonged to them. The agreement did not take into account research and work done independently by the employee and ascertained that the sole ownership belonged to Apllied for one year after the contract ended. 

The Court held that the terms of the patent invention agreement were too broad. It assigned inventions to Applied even though it was not based on a trade secret and were developed after the contract termination. 

The Court also found that the clause in the Applied invention assignment agreement was in direct conflict with the Business and Professions Code Section 16600. They also held Applied liable for unfair business practices under Business and Professions Code 17200 .

Conclusion  

California has laws protecting both employers and employees against unfair business practices and contracts. It is the responsibility of employers and employees to respect these laws and contract clauses.  They should not take advantage of clauses in patent invention agreements to restrict employees from practicing their profession or share employer trade secrets with third parties, 

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When a Promise Isn’t Enough – Crafting Proper Employee Patent Assignments

employment patent assignment

Christopher M. King

Related insights, foley automotive update, department of justice and apple reach $25 million landmark agreement, irs releases long-awaited updates to investment tax credit regulations.

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