Patent Rights As A Business Asset

• Jurisdiction: Maryland

III. PATENT RIGHTS AS A BUSINESS ASSET

A. Introduction

A patent is an alienable legal right, and thus, may be assigned or licensed. Similarly, a patent application, having inchoate legal rights, may be assigned or licensed. Accordingly, patents and patent applications may be valued as intellectual property that may be subject to contracts and business regulation as with other customary business assets.

B. Assignment and Licensing

Patents and patent applications may be bought, sold, and licensed according to common law contract principles. The instances where patent law may preempt state contract law include the doctrines of assignor and licensee estoppel as well as in the contexts of standing to sue for infringement, employment, mergers and acquisitions, bankruptcy, antitrust, and patent misuse.

For example, an assignor is estopped from challenging the validity of a patent following its sale. A licensee, however, may not be estopped from challenging the validity of a patent it has licensed. A licensee, even an exclusive licensee, may not have standing to sue for patent infringement alone. Only a license that conveys all substantial patent rights, including any reversionary rights, will vest the licensee with standing to sue alone. Even where a departing employee-inventor was not under a contractual...