Jointly Owned Intellectual Property: Everything to Know
Jointly owned intellectual property is intellectual property, or IP, that is owned by two or more people at once.3 min read
Jointly Owned Intellectual Property Overview
Jointly owned intellectual property is intellectual property, or IP, that is owned by two or more people at once. This can occur when two or more people invent, create, or author a patentable property together or when a compromise on ownership is reached in a contract. This most often happens when the individual’s contribution to a collaborative work cannot be easily discerned from the other's.
Scenarios where joint ownership can occur include joint development arrangements, joint ventures, and subcontracting situations. Only what is referred to as “active contribution” to a work will qualify the individual for a right to co-ownership; what is referred to as “ordinary assistance” or the sharing of information and ideas does not. Essentially, the contributions of the individuals should be indivisible from the whole.
Joint ownership can occur with all IP forms: copyright, patents, trade secrets, and trademarks. Furthermore, with the increase in collaborative research in recent years, the prevalence of joint ownership has also increased. It is therefore important to be up to speed on every aspect joint ownership, especially if it is likely that your work will result in such an outcome.
Jointly Owned Copyrights
Joint owners of copyrights have the right to copy, distribute, create derivate works, and wield other exclusive rights where their work is concerned, and they may do so without consulting with their fellow copyright owners. They do have to share any profits they receive from their copyright, however, and they must receive unanimous consent from the other owners to license the copyright. On the other hand, unanimous consent is not required for a copyright infringement suit to move forward.
It is also important to note that copyright exists as soon as a work is created, whereas patent rights are granted after a patent application is filed. Once copyright is in effect, the ownership of the copyright can be transferred freely as if it were any piece of personal property, without the consent of the co-owners.
Jointly Owned Patents
When a patent is jointly owned, each owner may use, make, offer to sell, sell, or import the asset described in the patent without needing the consent of the other owners, so long as the patent rights of the other owners are not infringed upon with a separate patent. Each patent owner may also profit from the patent without having to share such profits with the co-owners. However, exclusively licensing the patent to a third party will generally require the consent of every co-owner, as will such consent be needed for any patent enforcement.
Jointly Owned Trade Secrets
Laws regarding the joint ownership of trade secrets are not as well defined as they are for patents and copyrights, as this is not as common. It is perhaps wise to assume though that profits derived from trade secrets will have to be shared amongst the owners and unanimous owner consent will be required to license the trade secret, although case law and statutes have little to say on this.
Jointly Owned Trademarks
Similarly, although jointly owning a trademark is possible, it is uncommon, since the basic purpose of the trademark is to designate ownership to a single person or entity. However, if this does occur, joint trademark owners will in most cases have to share any profits derived from that trademark, and consent will be required to exclusively license the trademark. A more common scenario than this is a business entity being jointly owned and the entity owning the trademark.
Other Joint IP Ownership Issues
Some other issues involving joint ownership to consider include:
- Joint owners can modify a number of details involving joint IP ownership by addressing the details in a contract, as long as such adjusted details do not violate antitrust laws.
- Joint ownership rules, as stated above, do not apply in the same way in many foreign nations. For instance, in the U.K. and Canada, joint patent owners cannot license the patent right to third parties without unanimous owner consent.
- Joint ownership can often lead to many difficult legal situations, so emerging companies often try to avoid it or at least modify the default rules in a joint ownership contract.
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