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AETNA-STANDARD ENGINEERING COMPANY v. LEROY R. ROWLAND (05/31/85)

filed: May 31, 1985.

AETNA-STANDARD ENGINEERING COMPANY, APPELLANT,
v.
LEROY R. ROWLAND



APPEAL FROM THE DECREE MAY 12, 1983 IN THE COURT OF COMMON PLEAS OF BUTLER COUNTY, CIVIL NO. 76-052 IN EQUITY

COUNSEL

Walter J. Blenko, Jr., Pittsburgh, for appellant.

William H. Logsdon, Pittsburgh, for appellee.

Cirillo, Tamilia and Montgomery, JJ.

Author: Cirillo

[ 343 Pa. Super. Page 67]

Appellant Aetna-Standard Engineering Co. ("Aetna") challenges a final decree in equity of the Court of Common Pleas of Butler County, entered May 12, 1983. That decree dismissed both appellant's and appellee Leroy V. Rowland's exceptions, and adopted the trial court's December 30, 1982, order. That order, in turn: 1) declared appellee to be the sole owner of the subject matter in certain enumerated claims in United States Patent 4,037,453; 2) declared appellee to be a joint inventor, with Robert A. Remner, of certain other enumerated claims in the patent; 3) required appellant to execute any documents appellee needed to perfect his ownership interest in the patent; and 4) gave appellant a shop right in the patent limited to the project contract with Ishikawajima-Harima Heavy Industries ("IHI"), a Japanese firm for which the patented article was invented.

Appellant now presents three questions:

[ 343 Pa. Super. Page 681]

.) Where an employee is hired as a skillful designer of machinery and is assigned to devote his time and skill to solve a specific problem by designing a new machine, does the employer own any invention in the new machine?

2.) Assuming, arguendo, that the employer does not own an invention made by the employee as a result of his work assignment, does the employer receive an irrevocable, royalty-free license or "shop right"?

3.) Where United States Letters Patent issue as a result of a joint invention, does each inventor hold an undivided interest in the entire patent?*fn1

We conclude that appellant is not entitled to an assignment of appellee's invention, but that it has a shop right for the invention's use. In addition, appellee, as a joint inventor, holds an indivisible joint interest in the patent.

We note first that the present controversy does not concern the validity or an infringement of the involved patent; such disputes are for a federal court's resolution. See generally 35 U.S.C. §§ 281-294 (remedies for infringement); Healy v. Sea Gull Specialty Co., 237 U.S. 479, 35 S.Ct. 658, 59 L.Ed. 1056 (1914); Rubens v. Bowers, 136 F.2d 887 (9th Cir. 1943). Appellant Aetna's questions presented pertain instead to the assignment and divided ownership of patent rights and to shop rights in a patented invention. These "incidental and collateral" issues of property rights in an invention a state court may entertain. Quaker State Oil Refining Co. v. Talbot, 315 Pa. 517, 174 A. 99, appeal after remand 322 Pa. 155, 158, 185 A. 586, 587 (1936). See also Van Products Co. v. General Welding & Fabricating Co., 419 Pa. 248, 213 A.2d 769 (1965); Slemmer's Appeal, 58 Pa. 155 (1868).

We also note that appellant does not allege that appellee, by retaining his interest in the instant patent, has

[ 343 Pa. Super. Page 69]

    misappropriated any trade secrets of appellant. Such an allegation would be separate from and independent of assignment, ...


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