Chapter 37 - § 37.7 • OWNERSHIP

• Jurisdiction: Colorado

§ 37.7 • OWNERSHIP

Patent ownership is an important area of patent law for business attorneys to understand. In any due diligence assessment of a company's patent portfolio, this often is the first thing that a corporate attorney will check. In the United States, unless a duty exists to assign patent rights to another, an inventor owns the U.S. patent rights to an invention. Inventorship can be limited to a single inventor or can include multiple inventors. One will be able to determine the claimed inventorship by reviewing the first page of a patent (for examples, see Exhibits 37A, 37B, and 37C to this chapter) or by reviewing the prosecution history in the case of a pending patent application.

§ 37.7.1—Joint Inventorship

When a patent lists multiple inventors, each of the inventors has an independent ownership right in the patent.⁶⁹ Thus, if a patent lists Inventor "A" and Inventor "B" as joint inventors, Inventor A can license the patent rights to a third party "C" without the permission of Inventor B. Furthermore, Inventor A would have absolutely no duty to share with Inventor B the profits from the license (i.e., make an accounting).⁷⁰ To enforce a patent in a patent infringement lawsuit, however, all of the joint owners must participate.⁷¹

It does not matter that one inventor made a small contribution to the invention and another inventor was really the primary contributor to the invention. If both Party "A" and Party "B" are deemed to be inventors, then they both will have an equal right to exploit the patent. Thus, when purchasing patent rights for a patent that lists joint inventors, it is important to make sure that the patent rights are being purchased from all of the inventors — assuming that these inventors have not previously assigned their rights.

The actual determination of whether an individual should be listed as a joint inventor can be a very difficult determination. In fact, joint inventorship has been described as "one of the muddiest concepts in the muddy metaphysics of the patent law."⁷²

Practice Pointer
When a client receives a notice letter regarding a patent, it is a worthwhile exercise to determine if a joint inventor exists from whom the patent right could be licensed under more reasonable terms.

§ 37.7.2—Assignments

Patent rights can be assigned to a third party.⁷³ This applies to both the assignment of a patent application as well as the assignment of an issued patent. Commonly, the assignment takes place in conjunction...