## Facts

- In 1958, Matthew J. Relis was hired by Curtiss-Wright (CW) to perform administrative functions and design work as needed; he had an electrical engineering background and managed CW’s digital computer department.
- Relis signed an employment agreement requiring him to disclose and assign to CW (and its subsidiaries or affiliates) all rights in “any and all inventions” he made while employed, and to cooperate in obtaining patents for such inventions.
- In 1961, while Relis and two other CW employees (including Joseph R. Andreaggi) were fully employed by CW and after discussions tied to a railroad customer’s needs, they conceived a device intended to produce a document readable both by humans and by machines, later referred to as “Magdop.”
- The Magdop concept involved using a typewriter linked to an encoding device so that typing a document would simultaneously cause information to be magnetically recorded on magnetically backed paper; the inventors prepared circuitry schematics, assembled hardware, and constructed a model, though not a completed commercial product.
- The inventors submitted multiple invention-disclosure forms (reported as 16) documenting the project and the inventive work in detail.
- CW experienced financial difficulties; in late 1963 and early 1964, Andreaggi was terminated as part of cutbacks.
- Andreaggi orally offered to purchase the Magdop project from CW, and CW agreed to sell its interests.
- In May 1964, Relis executed a written assignment to CW, its successors, and its assigns, assigning invention-disclosure materials related to Magdop and agreeing to cooperate and execute papers needed for patenting.
- In 1965, Relis was terminated by CW for financial reasons; in 1966, he executed another assignment of Magdop-related invention-disclosure materials to CW and its assigns.
- CW later sold and assigned all its rights, title, and interest in Magdop, including the related invention disclosures, to Andreaggi; Andreaggi then assigned part of those rights to Robert Graf.
- In the 1970s, Andreaggi and Graf sought and obtained patents covering Magdop; Relis was named as a coinventor but refused to assign his patent interest to Andreaggi and Graf or to cooperate as requested.
- Relis defended on the ground that he had no duty to assign because, during his CW employment, the invention was not a complete, perfected, reduced-to-practice working model; he also claimed rights as a coinventor in supposed “further developments” reflected in the applications and patents.

## Issues

1. Whether Relis’s employment agreement and his written assignments to CW, its successors, and its assigns obligated him to assign his coinventor interest in the Magdop patents to Andreaggi and Graf as CW’s assignees.
2. Whether Relis could avoid assignment by asserting that no assignable invention existed during employment because Magdop was not fully completed or reduced to practice while he worked at CW.
3. Whether Relis could refuse to assign based on a claim that the patents covered later “further developments” made after employment ended and therefore outside CW’s (and plaintiffs’) rights.

## Decision

- The court granted relief compelling Relis to execute assignments transferring his interests in the Magdop patents to Andreaggi and Graf as assignees of CW’s rights.
- The court rejected Relis’s contention that a duty to assign depended on a finished, reduced-to-practice product during employment, relying on the employment agreement, the invention disclosures, and the work performed during the CW period.
- The court declined to accept Relis’s attempt to withhold assignment based on alleged later “further developments,” concluding on the proofs that plaintiffs’ patents were tied to the invention that had been disclosed and assigned through CW and then transferred to plaintiffs.
- The court enforced the contractual duty to cooperate and execute documents necessary to place patent title where the assignments required.

## Legal Principles

- An employee’s agreement to assign “any and all inventions” made during employment, coupled with a promise to assist with patent procurement, is enforceable in equity after employment ends.
- Written assignments running to an employer’s “successors and assigns” permit later transferees of the employer’s invention rights to seek specific performance requiring execution of patent assignments.
- A contractual duty to assign is not limited to inventions that have matured into a completed, market-ready device during employment; documented conception and developmental work may be enough where the parties’ agreements cover inventions made while employed.
- A coinventor cannot defeat an assignment obligation by asserting unspecified later improvements when the evidence supports that the issued patents stem from the invention previously disclosed and assigned through the employer.

## Conclusion

In Andreaggi v. Relis, the Chancery Division enforced Relis’s employment-era invention-assignment duties and his later written assignments to Curtiss-Wright, holding that the employer’s assignees (Andreaggi and Graf) were entitled to specific performance compelling Relis to assign his coinventor interest in the Magdop patents and to carry out the cooperation promised in the patenting process, notwithstanding his arguments about lack of reduction to practice and supposed post-employment developments.


Andreaggi v. Relis, 171 N.J. Super. 203 (1979)