Joint Patent Ownership: Who Owns What
In a previous post, we discussed difference between inventorship and ownership in regards to patents. To recap, only inventors (i.e., someone who contributed to creating the invention) can be an “inventor,” but anyone can become a patent owner. A non-inventor typically becomes a patent owner by a written agreement signed by the inventor, that transfers ownership (e.g., an assignment). This situation is more complicated when you have multiple inventors or multiple owners.
Here are the basic differences between individual patent ownership and joint patent ownership:
1. Individual Ownership – An individual person or single entity may own the entire patent. For example, if there is only one inventor, and that inventor has not assigned the patent, that inventor owns the entire patent. Individual ownership, however, ca
n also occur when all parties having an ownership interest (all inventors and assignees) assign the patent to one person or entity.
2. Joint Ownership – Multiple parties can share ownership in a patent. For example, joint ownership occurs when there are:
- Multiple inventors who have not assigned their patent rights;
- Multiple parties who have been assigned patent rights; or
- A combination of assignee(s), and inventor(s) who have not assigned their patent rights.
Each joint inventor may only assign the interest he or she holds. Thus, an assignment by one joint inventor means that the assignee, is only a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. See how fast it can get complicated?!
Rights of Co-Owners or Joint Owners
Unless the co-inventors have an agreement to the contrary, each co-inventor shares full patent rights with any other co-inventor(s). That is, each co-inventor can make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States without the consent of and without accounting to the other co-inventors.
Joint ownership has some inherent limitations. For one thing, because each joint owner can exercise rights without having to account to other joint owners, each joint owner can grant licenses to third parties without the consent of the other joint owners. While this sounds good at first, it also means that no single joint owner has the power to grant an exclusive license given that the other joint owners can grant licenses to third parties, too.
Additionally, in order to bring a lawsuit for patent infringement against a third-party, all joint owners must be named plaintiffs. If one joint inventor refuses to join the action as a plaintiff, this can end the lawsuit and effectively stop the other patent owners from pursuing infringers.
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