PITFALLS OF JOINT
                             OWNERSHIP
                            OF TARGET IP
Richard Allan Horning   ...
PATENT RISKS

• Have All Inventors Been Named?
• Have All Inventors Executed Valid
  Written Assignments?
  – Inventors Ow...
PATENT RISKS

• Remember: Each Co-Owner Can
  License Without Consent of Other
  Co-Owners and Without Being
  Required to...
PATENT RISKS

• Remember: An Agreement Among
  Co-Owners Giving One the
  Exclusive Right to Grant Licenses
  May Be Execu...
COPYRIGHT RISKS

• Each Co-Owner of a Copyright
  Has an Independent Right, Without
  Obtaining Consent, to Exploit the
  ...
COPYRIGHT RISKS

• Duty to Account Applies to
  Transferees
• Pointer: In Foreign Countries the
  Rules May Be Different
 ...
TRADEMARKS

• Joint Ownership of Trademarks is
  Possible, but is Usually Counter to
  the Theory of Trademark Which is
  ...
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Pitfalls of Joint Ownership of Target IP

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Pitfalls of Joint Ownership of Target IP

  1. 1. PITFALLS OF JOINT OWNERSHIP OF TARGET IP Richard Allan Horning IP Society Palo Alto, CA Palo Alto, CA April 29, 2004 SPEAKER Richard Allan Horning Partner and Chair, Technology Practice Group Tomlinson Zisko LLP Palo Alto, California RHORNING@TZLLP.COM
  2. 2. PATENT RISKS • Have All Inventors Been Named? • Have All Inventors Executed Valid Written Assignments? – Inventors Own an Undivided Interest in the Absence of Written Agreement – In Collaboration Agreements Between Companies, Joint Ownership May Arise by Operation of Law If At Least One Employee is a Co-Inventor PATENT RISKS • Co-Invention is a Matter of Patent Law • Co-ownership is a Matter for Contractual Alteration • Remember: Each Co-Owner Can Make, Use, Sell, Etc., Without Consent of Other Co-Owners and Without Being Required to Account
  3. 3. PATENT RISKS • Remember: Each Co-Owner Can License Without Consent of Other Co-Owners and Without Being Required to Account • Remember: No Co-Owner Without Consent of Other Co-Owners Can Grant an Exclusive License PATENT RISKS • Remember: Each Co-Owner Must Join in Suits for Infringement • Pointer: In Foreign Countries the Rules May Be Different – In UK and Canada Joint Owner Has Right to Exploit the Patent but No Right to License a Third Party Without Consent, but Can Convey its Ownership Interest
  4. 4. PATENT RISKS • Remember: An Agreement Among Co-Owners Giving One the Exclusive Right to Grant Licenses May Be Executory, and Subject to Rejection in Bankruptcy Unless Restriction Falls Within Sec. 365(n) Exception – Exception Refers to Licensees, Not Co-Owners COPYRIGHT RISKS • Authors of a “Joint Work” are Co- Owners of the Copyright in the Work • Each Author Probably Must Contribute Copyrightable Subject Matter • Each Author Must Intend that Their Contributions be Merged into the Whole, and that They Would be Co-Authors
  5. 5. COPYRIGHT RISKS • Each Co-Owner of a Copyright Has an Independent Right, Without Obtaining Consent, to Exploit the Copyright • Each Co-Owner is Entitled to Grant Non-Exclusive Licenses • Co-Owners of Copyright Must Account for Profits from Using or Licensing COPYRIGHT RISKS • Authors Can Determine Their Intent by Contract • Co-Owners May Reallocate Rights Among Themselves, Provided it is Done in Writing Signed by the Owners of the Rights.
  6. 6. COPYRIGHT RISKS • Duty to Account Applies to Transferees • Pointer: In Foreign Countries the Rules May Be Different – In UK Joint Owner of Copyright May Not Even Exploit Copyright Without Consent of Co-Owners TRADE SECRETS • Each Co-Owner of a Trade Secret Has the Right to Use the Secret • Although not Clearly Established, Obligation to Account is probably Outcome of Application of “Equitable Principles” • Co-Owners may Have an Obligation to Co-Owner to Prevent “Unlawful and Unreasonable Disclosure”
  7. 7. TRADEMARKS • Joint Ownership of Trademarks is Possible, but is Usually Counter to the Theory of Trademark Which is to Serve as a Designation of a Source of Origin • Joint Owners Will Need to Assure Control Exercised Over the Nature and Quality of the Goods or Services TRADEMARKS • Pointer: In Foreign Countries the Rules May Be Different – Generally Other Counties Do Not Accept Co-Ownership, and Thus Agreements Giving Ownership to One and Full Benefit to the Other Co- Owner are Advised

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