Key Takeaways

  • Patent co-ownership occurs when two or more individuals or entities share legal rights to a single patent.
  • Without a written agreement, co-owners may have equal rights to license and use the patent independently.
  • Each co-owner generally has the unilateral right to exploit the invention, including granting licenses without the others’ consent.
  • Patent infringement lawsuits require all co-owners to participate unless there’s a contractual waiver.
  • A cooperation agreement helps clarify ownership, licensing rights, and enforcement responsibilities.
  • When employers are involved, employment agreements often pre-assign patent rights to the company.
  • Legal standing in court depends on the exclusivity of rights and whether the co-owner has waived the right to opt out.

Patent co-ownership refers to a piece of intellectual property, like an invented process or product, that is owned by two or more parties and protected by patent law. The parties involved in such ownership are individuals or companies.

How Does Intellectual Property Ownership Work?

If a person invents a new process or product, they have basic rights of ownership over their creation. The creator of a patented work is the inventor, but sometimes this role is shared. Whether a product or process is created by one or more individuals or companies, it should be protected by a patent.

Intellectual property rights are in place to encourage innovation and give rightful recognition to the discoveries and works of those who deserve it. These rights mean that an invention can be legally protected through the federal courts.

When multiple parties are involved in the development or creation of a patented work, they can share ownership with a co-owned patent. If an invention is patented, anyone who wants to do the following must gain approval from the patent owner:

  • Produce the patented product.
  • Sell the patented product.
  • Use the patent process.

When multiple parties are involved in patent ownership, they will need to make clear the rights and responsibilities of each of the parties involved in their cooperation agreement under the terms and conditions. Unclear ownership of a patent can easily lead to issues when trying to enforce the patent and carry out an infringement case.

Ownership Transfer and Employer Rights

In many business and academic settings, inventors may not retain personal ownership of their inventions. Employers often require inventors to assign their rights as a condition of employment, particularly in industries focused on R&D. These assignments are typically executed through employment contracts or invention assignment agreements. When such agreements are in place, the employer becomes the sole owner or a co-owner of the resulting patent, depending on the arrangement.

It is important to execute these agreements clearly and early, especially before filing a patent application. Disputes can arise if inventors later contest the validity or scope of their assignment. Additionally, universities may follow their own IP policies and require that rights to inventions developed under funded research be assigned to the institution or shared with the funding entity.

How Does Patent Co-Ownership Happen?

Co-ownership or joint ownership of patents is a common occurrence. Anytime a product or process' creation includes the work of more than one person or parties enter into a collaboration, they will share the ownership of the patent. In the first scenario, when two or more people create a patented invention together, they are called co-inventors. Even if one inventor did more work than the other, if they're both a part of the creation, they invented together.

Unless otherwise specified in a contract between the inventors, all of the parties involved in the creating of the patented invention own an equal interest in the patent. Basically, the rights to a patent belong to the inventor of the patented product or process, even if that includes more than one person.

Because of the nature of companies with many patented inventions under their care, employees are frequently asked to sign over the rights to their intellectual property (IP). This way, the company can own all of the patents to their inventions rather than sharing ownership with different employees.

Legal Implications of Co Patent Ownership

Co patent ownership can introduce significant legal complexities. Each co-owner typically has the right to:

  • Make, use, sell, and import the invention without the other owners' permission.
  • Grant non-exclusive licenses to third parties without accounting to or gaining consent from co-owners.

However, no co-owner can grant an exclusive license without the express consent of all other co-owners. This unrestricted ability to license may lead to undercutting of commercial value if not regulated by a prior agreement.

The U.S. law governing this, particularly 35 U.S.C. § 262, states: “In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell... without the consent of and without accounting to the other owners.”

Therefore, in the absence of a clear agreement, co patent ownership may hinder commercialization or cause disputes about profit sharing and strategy.

What Are the Rights of a Joint Owner?

Patents registered with the United States Patent and Trademark Office give the owner or owners of U.S. patents the right to make, sell, or offer to sell the protected invention without having to get the other owners of the patent's consent. Each of the owners can also grant patent licenses to other non-owners without the consent of their co-owners.

These rights can be changed if specified in a cooperation agreement signed by the owners. Some will choose to make a rule that all owners of a patent must agree to any licenses granted in order to protect the patented invention's exclusivity.

Litigation Rights and the Need for Consent

Patent co-owners face unique hurdles when enforcing patent rights through litigation. One of the most critical restrictions is that a single co-owner cannot sue for patent infringement without the voluntary participation of all co-owners.

This requirement exists to prevent unilateral legal action that could affect the rights of other owners. U.S. courts have consistently ruled that:

  • All co-owners must be named as plaintiffs in an infringement lawsuit.
  • A co-owner can block the lawsuit by refusing to join, unless they previously waived that right in a contract.
  • Exceptions to this rule exist only if one party is an exclusive licensee with legal standing, or if the co-owner contractually agreed to join future suits.

This principle of requiring mutual consent has been upheld in numerous Federal Circuit cases, including Ethicon v. U.S. Surgical Corp. and DDB Technologies v. MLB Advanced Media. It illustrates why a well-drafted cooperation or ownership agreement is essential before pursuing patent enforcement.

What Is a Cooperation Agreement?

Usually, inventors who plan to work together on a project will draft and sign a cooperation agreement before they begin work on the product or process. This makes sure that everyone is on the same page and helps to avoid any issues down the road. A cooperation agreement is especially good to have in place before anyone spends money or time on the patenting process.

A cooperation agreement lays out the rights and ownership of the inventors regarding a patented, or soon-to-be-patented, invention. Large companies use cooperation agreements to handle the intellectual property of their employees and any contractors they work with. Universities will sometimes handle this issue differently because the nature of the research done there is different from that done at for-profit companies.

The basic rights regarding intellectual property differ across the globe. So, it's important to know the differences and similarities between IP rights in a different country if you are working with someone or a business from that country.

Best Practices for Managing Co Patent Relationships

Given the legal and strategic complexity of co patent relationships, the following best practices can help protect all parties:

  1. Draft an Ownership Agreement Early
    Define ownership percentages, decision-making authority, licensing procedures, and dispute resolution mechanisms before patent filing.
  2. Include Enforcement Provisions
    Specify whether all co-owners must join lawsuits and under what conditions. Address whether any co-owner may independently license or litigate the patent.
  3. Define Contribution-Based Equity
    Assign ownership based on each contributor’s role. Equal rights are the default, but not always appropriate in collaborative innovation.
  4. Document Assignments Clearly
    When employees or contractors contribute, written assignments ensure that the company or intended party receives proper rights.
  5. Review Jurisdiction-Specific Laws
    Patent rights and obligations may differ internationally. Parties collaborating across borders must address conflicts of law in their agreements.

These steps minimize the risks of unauthorized licensing, litigation blocks, and disputes among inventors, making a co patent relationship more manageable and productive.

Frequently Asked Questions

  • Can one co patent owner license the patent without the other’s consent?
    Yes. Unless an agreement states otherwise, any co-owner can license the patent to others independently.
  • Do all co-owners need to join a patent infringement lawsuit?
    Yes. All legal titleholders must be joined in the lawsuit, or the case may be dismissed for lack of standing.
  • How can I prevent a co-owner from licensing the patent without my input?
    Through a written agreement restricting unilateral licensing rights or requiring mutual consent for licensing decisions.
  • What happens if I develop a patent while employed?
    In most cases, your employer owns the patent if you signed an invention assignment agreement or it relates to your job duties.
  • Can co patent ownership be assigned or transferred?
    Yes. Co-owners can assign their interests to others, but this may introduce new parties into the ownership dynamic, complicating future decisions.

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