PowerPoint Presentation describing the unintended consequences on patentability and licensing of technologies that can result from unplanned, or even planned collaborations, when there is more than one inventor/owner of a technology
The CREATE Act -- As viewed from the Ivory Towers and from the TrenchesKevin E. Flynn
On December 10, 2004, Congress passed the Cooperative Research and Technology Enhancement (CREATE) Act to promote collaborative research and development efforts between inventive entities. The act expands 35 USC § 103(c) to allow research partners to share confidential information without creating a bar to the patentability of their joint inventions.
On November 30, 2010, Woodard, Emhardt attorney John Bradshaw was a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.” The webinar was part of the Practical Tips for Young Lawyers series sponsored by the Intellectual Property Section of the American Bar Association. Mr. Bradshaw's presentation focused on the development of the doctrine of inequitable conduct and included a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors was also discussed.
Page copy:
Knobbe Practice Japan Webinar Series
Partners Irfan Lateef and Mauricio Uribe provided an overview of patent litigation in the United States. They provided insights and practical tips related to understanding patent litigation in the United States and developing effective litigation strategies, including phases, timelines and milestones, fees and costs, and legal remedies. The presentation was summarized in Japanese by IP Strategist, Kenny Masaki.
The CREATE Act -- As viewed from the Ivory Towers and from the TrenchesKevin E. Flynn
On December 10, 2004, Congress passed the Cooperative Research and Technology Enhancement (CREATE) Act to promote collaborative research and development efforts between inventive entities. The act expands 35 USC § 103(c) to allow research partners to share confidential information without creating a bar to the patentability of their joint inventions.
On November 30, 2010, Woodard, Emhardt attorney John Bradshaw was a featured speaker in a webinar entitled “Summary of Pitfalls and Strategies to Avoid Charges of Inequitable Conduct.” The webinar was part of the Practical Tips for Young Lawyers series sponsored by the Intellectual Property Section of the American Bar Association. Mr. Bradshaw's presentation focused on the development of the doctrine of inequitable conduct and included a summary of specific circumstances where inequitable conduct has been found. Predictions on where the doctrine may be heading and current best practices for patent prosecutors was also discussed.
Page copy:
Knobbe Practice Japan Webinar Series
Partners Irfan Lateef and Mauricio Uribe provided an overview of patent litigation in the United States. They provided insights and practical tips related to understanding patent litigation in the United States and developing effective litigation strategies, including phases, timelines and milestones, fees and costs, and legal remedies. The presentation was summarized in Japanese by IP Strategist, Kenny Masaki.
As competition and innovation in the private space race increases, so too will the importance of patent protection. Partner Tom Cowan gave an informative presentation that examines basic patent issues that stakeholders should be aware of, including ownership of space-related inventions, whether you can patent those inventions, how to mitigate the risk of infringing others’ space patents, and how the U.S. patent law operates in space.
Knobbe Practice Japan Webinar Series
Partners Mauricio Uribe, Dan Altman and David Schmidt, Ph.D., gave a presentation focused on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement. The presentation was summarized in Japanese by IP Strategist, Kenny Masaki.
Speakers: Mauricio Uribe, Dan Altman, David Schmidt, Ph.D., Kenny Masaki
Partners Mauricio Uribe, Dan Altman and Jessica Achtsam gave a presentation on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement.
Speakers: Mauricio Uribe, Dan Altman and Jessica Achtsam
Inventorship: Who should be listed as an inventor for a patent?Aurora Consulting
In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – named as an inventor?
In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.
Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, leads a deep dive into the origins of inventorship, breaks down who is and isn’t eligible for inclusion as an inventor, and explains how improper inventorship could result in revoked patent rights.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9603758-inventorship-who-should-be-listed-as-an-inventor-for-a-patent
Blog post: https://www.aurorapatents.com/blog/new-podcast-inventorship
The following is a memorandum that I wrote for the Office of the New York State Attorney General regarding a pending Environmental Protection Bureau case.
I have received permission to use this memorandum as a writing sample. The parties’ names have been changed to protect confidentiality.
Presentation given to the International Marine Contractors Association Conference in Amsterdam 28 & 29 November 2012 .
Iin the current economic climate Clyde & Co suggest that claims handling issues of the kind Graeme will discuss are likely to be increasingly relevant and topical as far as the IMCA’s members are concerned.
Contractors are being pressured by operators to accept more risk on projects and insurers are increasing their deductibles which means contractors are bearing increasingly large exposures to uninsured losses.
Claims which would once have fallen to the operator or to project insurers are increasingly becoming the responsibility of contractors. Further, it is clear from the number of recent high-profile incidents that offshore operations are themselves becoming inherently riskier as projects move to more extreme environments and more unstable jurisdictions.
Unlike operators, many contrators may not have an in-house legal function or may not have one with claims handling experience. Graeme discusses basic legal concepts which contractors may face.
Graeme’s presentation mainly discusses claims handling issues but is equally relevant to those who are involved in contract drafting, on the basis that prevention is better than cure.
Disclosure can often be the key phase in legal proceedings. Up to this point one or more of the parties may be in the dark, unclear of the true merits of their claim or defence, but disclosure can serve to clarify who has the better of the arguments and where the balance of power lies for settlement purposes.
Anton piller order l6 l7-_20 dec20 2013_jeong cp_Nik Nasrun Nazmi
anton piller oder, definition condition function and comparative analysis with UK Canada Intelectual Property Rights, patent Law; Extraordinary relief by court
Partners Jon Gurka and Mauricio Uribe provided an overview of patent litigation in the United States. They provided insights and practical tips related to understanding patent litigation in the United States and developing effective litigation strategies, including phases, timelines and milestones, fees and costs, and legal remedies.
Speakers: Jon Gurka, Mauricio Uribe
As competition and innovation in the private space race increases, so too will the importance of patent protection. Partner Tom Cowan gave an informative presentation that examines basic patent issues that stakeholders should be aware of, including ownership of space-related inventions, whether you can patent those inventions, how to mitigate the risk of infringing others’ space patents, and how the U.S. patent law operates in space.
Knobbe Practice Japan Webinar Series
Partners Mauricio Uribe, Dan Altman and David Schmidt, Ph.D., gave a presentation focused on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement. The presentation was summarized in Japanese by IP Strategist, Kenny Masaki.
Speakers: Mauricio Uribe, Dan Altman, David Schmidt, Ph.D., Kenny Masaki
Partners Mauricio Uribe, Dan Altman and Jessica Achtsam gave a presentation on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement.
Speakers: Mauricio Uribe, Dan Altman and Jessica Achtsam
Inventorship: Who should be listed as an inventor for a patent?Aurora Consulting
In the US especially, patents are granted to inventors. More often than not, that’s more than one person and the ideas themselves are fluid concepts that often evolve through many handoffs from initial conception through implementation and sometimes even throughout patent prosecution, but how do we determine who all should – and is legally required to be – named as an inventor?
In the constitutionally expressed interest of protecting inventors and the conception of their ideas, failure to include the right people can be a death sentence for a patent and grounds for invalidity.
Daniel Wright, Partnership Manager and Patent Strategist here at Aurora, leads a deep dive into the origins of inventorship, breaks down who is and isn’t eligible for inclusion as an inventor, and explains how improper inventorship could result in revoked patent rights.
Podcast: https://patentlystrategic.buzzsprout.com/1734511/9603758-inventorship-who-should-be-listed-as-an-inventor-for-a-patent
Blog post: https://www.aurorapatents.com/blog/new-podcast-inventorship
The following is a memorandum that I wrote for the Office of the New York State Attorney General regarding a pending Environmental Protection Bureau case.
I have received permission to use this memorandum as a writing sample. The parties’ names have been changed to protect confidentiality.
Presentation given to the International Marine Contractors Association Conference in Amsterdam 28 & 29 November 2012 .
Iin the current economic climate Clyde & Co suggest that claims handling issues of the kind Graeme will discuss are likely to be increasingly relevant and topical as far as the IMCA’s members are concerned.
Contractors are being pressured by operators to accept more risk on projects and insurers are increasing their deductibles which means contractors are bearing increasingly large exposures to uninsured losses.
Claims which would once have fallen to the operator or to project insurers are increasingly becoming the responsibility of contractors. Further, it is clear from the number of recent high-profile incidents that offshore operations are themselves becoming inherently riskier as projects move to more extreme environments and more unstable jurisdictions.
Unlike operators, many contrators may not have an in-house legal function or may not have one with claims handling experience. Graeme discusses basic legal concepts which contractors may face.
Graeme’s presentation mainly discusses claims handling issues but is equally relevant to those who are involved in contract drafting, on the basis that prevention is better than cure.
Disclosure can often be the key phase in legal proceedings. Up to this point one or more of the parties may be in the dark, unclear of the true merits of their claim or defence, but disclosure can serve to clarify who has the better of the arguments and where the balance of power lies for settlement purposes.
Anton piller order l6 l7-_20 dec20 2013_jeong cp_Nik Nasrun Nazmi
anton piller oder, definition condition function and comparative analysis with UK Canada Intelectual Property Rights, patent Law; Extraordinary relief by court
Partners Jon Gurka and Mauricio Uribe provided an overview of patent litigation in the United States. They provided insights and practical tips related to understanding patent litigation in the United States and developing effective litigation strategies, including phases, timelines and milestones, fees and costs, and legal remedies.
Speakers: Jon Gurka, Mauricio Uribe
This presentation by Herbert HOVENKAMP, University of Pennsylvania Law School, was made during the discussion “Licensing of IP rights and competition law” held at the 131st meeting of the OECD Competition Committee on 6 June 2019. More papers and presentations on the topic can be found out at oe.cd/lipr.
Co-owned Patent Disputes in Vietnam What to Do .pdfKenfoxLaw
A co-owned patent arises when two or more parties jointly create an invention and seek patent protection for it. How if an invention is created by two parties, but just one party is named as inventor and owner while the other is only named as “inventor”? Can it cause any legal consequences? What can the other inventor do in such a case if the inventor who filed the patent application does not reach an amicable agreement on a co-owned patent? In recent news, the Intellectual Property Offices of Vietnam (IP VIETNAM) have been dealing with a case regarding “the right to file a patent application” in case of co-owned patent, highlighting the importance of understanding the legal requirements for patent filing and ownership. This article will focus on the specifics of this case and examine its implications for intellectual property rights in Vietnam.
This pamphlet provides an easy to understand explanation of how federal court patent litigation works, from filing of the complaint all the way to appeals, all in plain English and geared toward the non-expert. Please check it out and let me know what you think!
This pamphlet provides an easy to understand explanation of how federal court patent litigation works, from filing of the complaint all the way to appeals, all in plain English and geared toward the non-expert. Please check it out and let me know what you think!
http://finishedexams.com/homework_text.php?cat=17
Immediate access to solutions for ENTIRE COURSES, FINAL EXAMS and HOMEWORKS “RATED A+" - Without Registration!
A co-owned patent arises when two or more parties jointly create an invention and seek to obtain patent protection for it. How if an invention is created by two parties, but just one party is named as inventor and owner while the other is only named as “inventor”? Can it cause any legal consequences? What can the other inventor do in such a case if the inventor who filed the patent application does not reach an amicable agreement on a co-owned patent? In recent news, the Intellectual Property Offices of Vietnam (IP VIETNAM) have been dealing with a case regarding “the right to file a patent application” in case of co-owned patent, highlighting the importance of understanding the legal requirements for patent filing and ownership. This article will delve into the specifics of this case and how it impacts intellectual property rights in Vietnam.
In 2020, the Ministry of Home Affairs established a committee led by Prof. (Dr.) Ranbir Singh, former Vice Chancellor of National Law University (NLU), Delhi. This committee was tasked with reviewing the three codes of criminal law. The primary objective of the committee was to propose comprehensive reforms to the country’s criminal laws in a manner that is both principled and effective.
The committee’s focus was on ensuring the safety and security of individuals, communities, and the nation as a whole. Throughout its deliberations, the committee aimed to uphold constitutional values such as justice, dignity, and the intrinsic value of each individual. Their goal was to recommend amendments to the criminal laws that align with these values and priorities.
Subsequently, in February, the committee successfully submitted its recommendations regarding amendments to the criminal law. These recommendations are intended to serve as a foundation for enhancing the current legal framework, promoting safety and security, and upholding the constitutional principles of justice, dignity, and the inherent worth of every individual.
NATURE, ORIGIN AND DEVELOPMENT OF INTERNATIONAL LAW.pptxanvithaav
These slides helps the student of international law to understand what is the nature of international law? and how international law was originated and developed?.
The slides was well structured along with the highlighted points for better understanding .
A "File Trademark" is a legal term referring to the registration of a unique symbol, logo, or name used to identify and distinguish products or services. This process provides legal protection, granting exclusive rights to the trademark owner, and helps prevent unauthorized use by competitors.
Visit Now: https://www.tumblr.com/trademark-quick/751620857551634432/ensure-legal-protection-file-your-trademark-with?source=share
Matthew Professional CV experienced Government LiaisonMattGardner52
As an experienced Government Liaison, I have demonstrated expertise in Corporate Governance. My skill set includes senior-level management in Contract Management, Legal Support, and Diplomatic Relations. I have also gained proficiency as a Corporate Liaison, utilizing my strong background in accounting, finance, and legal, with a Bachelor's degree (B.A.) from California State University. My Administrative Skills further strengthen my ability to contribute to the growth and success of any organization.
Responsibilities of the office bearers while registering multi-state cooperat...Finlaw Consultancy Pvt Ltd
Introduction-
The process of register multi-state cooperative society in India is governed by the Multi-State Co-operative Societies Act, 2002. This process requires the office bearers to undertake several crucial responsibilities to ensure compliance with legal and regulatory frameworks. The key office bearers typically include the President, Secretary, and Treasurer, along with other elected members of the managing committee. Their responsibilities encompass administrative, legal, and financial duties essential for the successful registration and operation of the society.
How to Obtain Permanent Residency in the NetherlandsBridgeWest.eu
You can rely on our assistance if you are ready to apply for permanent residency. Find out more at: https://immigration-netherlands.com/obtain-a-permanent-residence-permit-in-the-netherlands/.
Car Accident Injury Do I Have a Case....Knowyourright
Every year, thousands of Minnesotans are injured in car accidents. These injuries can be severe – even life-changing. Under Minnesota law, you can pursue compensation through a personal injury lawsuit.
Synopsis On Annual General Meeting/Extra Ordinary General Meeting With Ordinary And Special Businesses And Ordinary And Special Resolutions with Companies (Postal Ballot) Regulations, 2018
ADR in criminal proceeding in Bangladesh with global perspective.
Unintended Consequences of Joint Patent Ownership
1.
2. UNINTENDED CONSEQUENCES OF
JOINT PATENT OWNERSHIP
MODERATOR-
Rodney L. Sparks, J.D. Ph.D.
PANEL-
Marie Kerbeshian, Ph.D.
Michelle Booden, Ph.D.
Tom Boyce, J.D., Ph.D.
3. UNINTENDED CONSEQUENCES OF JOINT
PATENT OWNERSHIP
Outline
General Background Provided on:
Patent Ownership
Patent Prosecution and Litigation
Licensing
Foreign Laws
Panel Discussion
Recommendations for proactive measures
Recommendations for
4. Rodney L. Sparks, J.D., Ph.D.- Senior
Biotechnology Patent Counsel, University of Virginia
Licensing & Ventures Group
Marie Kerbeshian, Ph.D.- V.P. of Technology
Commercialization, Indiana University
Michelle Booden, Ph.D.- Associate Director, Office
of Technology Development , Salk Institute
Tom Boyce, J.D., Ph.D.- Partner, Chemistry and
Life Sciences, PIZZEYS, Patent and Trademark
Attorneys, Australia and NZ
5. Joint Ownership
• Joint ownership impacts a variety of licensing
and patent issues.
• When there is joint inventorship or joint
ownership of a patent with another entity,
there are many potential negative
ramifications as to:
• licensing, ability to enforce a patent by
infringement litigation, as well as potential
negative impact during patent prosecution.
6. Joint Ownership
• There are two ways for an organization to
become a joint owner of a patent or
technology:
–Intentionally (by collaborative
agreement, CREATE Act, CRADA, etc.)
–By accident, such as by a collaboration
that occurred w/o prior agreements in
place (potential fatal impact on patents
and litigation)
7. Joint Owners
35 U.S.C. § 261 Ownership; assignment
Subject to the provisions of this title, patents shall
have the attributes of personal property.
Applications for patent, patents, or any interest
therein, shall be assignable in law by an instrument
in writing. The applicant, patentee, or his assigns or
legal representatives may in like manner grant and
convey an exclusive right under his application for
patent, or patents, to the whole or any specified
part of the United States.
8. Joint Owners
35 U.S.C. § 261 Ownership; assignment.
Subject to the provisions of this title, patents shall have
the attributes of personal property.
Applications for patent, patents, or any interest therein,
shall be assignable in law by an instrument in writing.
The applicant, patentee, or his assigns or legal
representatives may in like manner grant and convey an
exclusive right under his application for patent, or
patents, to the whole or any specified part of the
United States.
9. Joint Owners
35 U.S.C. § 261 Ownership; assignment., cont.
A certificate of acknowledgment under the hand and
official seal of a person authorized to administer oaths
within the United States, or, in a foreign country, of a
diplomatic or consular officer of the United States or an
officer authorized to administer oaths whose authority is
proved by a certificate of a diplomatic or consular officer
of the United States, or apostille of an official designated
by a foreign country which, by treaty or convention,
accords like effect to apostilles of designated officials in
the United States, shall be prima facie evidence of the
execution of an assignment, grant, or conveyance of a
patent or application for patent.
10. Joint Owners
35 U.S.C. § 261 Ownership; assignment., cont.
An assignment, grant, or conveyance shall be void as
against any subsequent purchaser or mortgagee for a
valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within
three months from its date or prior to the date of such
subsequent purchase or mortgage.
(note that based on 35 U.S.C. § § 116 and 261
inventors are considered to be owners, unless and until
they assign, either impliedly or explicitly)
11. Ownership Without Assignment
The Federal Circuit has found that assignment
requirements can exist even in the absence of a signed
contract. As a result, a collaboration between two
unrelated institutions raises issues as to ownership.
Unless there is an agreement to the contrary, the
rights of the several joint assignees of a patent are
governed under 35 U.S.C. § 262 (i.e., inventorship
equals ownership until, or if, assignment occurs).
12. Joint Owners
35 U.S.C. § 262 Joint owners.
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 the patented invention within
the United States, or import the patented invention
into the United States, without the consent of and
without accounting to the other owners.
13. Joint Ownership Issues
Most entities do not plan properly and when
confronted with joint ownership do not appreciate all
the potential future ramifications, even when entering
an agreement with the other co-owner(s).
Inter-Institutional Agreements are not always well
thought out.
14. Expert Statements On Joint Ownership:
-“The only thing worse than being a Joint Owner is being a
Joint Owner with your Licensee!”
John Breen, J.D., Ph.D., Patent Atty., (seconded by
Rodney Sparks; all in favor say aye)
-“Being a sole owner is advantageous!”
Alan Bentley, M.S., Asst. Vice Chancellor, Center for
Technology Transfer and Commercialization,
Vanderbilt University.
-“Facing the danger”- Stanley H. Lieberstein, Esq.
-“A trap for the unwary”- Wendell R. Guffey, Esq.
15. Joint Ownership:
Effects on Patent Prosecution
1. The parties may not agree as to how to
prosecute, which claim groups to elect,
whether to file divisionals, when to amend,
how to amend, etc.
2. Cited prior art can be fatal if the ownership
is not the same for the art and the
application.
16. Joint Ownership:
Effects on Patent Prosecution, con’t.
3. Double Patenting-
The nonstatutory obviousness-type double patenting
rejection is based on a judicially created doctrine
grounded in public policy so as to prevent the
unjustified or improper timewise extension of the
“right to exclude” granted by a patent and to prevent
possible harassment by multiple assignees.
17. Double Patenting, con’t.
Remedy-
If an argument cannot be made to overcome the
art, then the only cure for an obviousness-type
double patenting is to file a terminal disclaimer.
Problem-
A terminal disclaimer cannot be filed if the
ownership of the art and application is not
identical (FATAL- cannot overcome the rejection)
18. Double Patenting, con’t.
“Common Ownership” is the phrase used when dealing with prior art
and terminal disclaimers. (see MPEP 706)
706.02(l)(2) Establishing Common Ownership or Joint Research
Agreement [R-6]- In order to be disqualified as prior art under 35
U.S.C. 103(c), the subject matter which would otherwise be prior art
to the claimed invention and the claimed invention must be
commonly owned, or subject to an obligation of assignment to a
same person, at the time the claimed invention was made or be
subject to a joint research agreement at the time the invention was
made. See MPEP § 706.02(l) for **>rejections under 35 U.S.C. 103
based on prior art under 35 U.S.C. 102(f) or 102(g) and< prior art
disqualified under 35 U.S.C. 103(c) in applications granted as patents
prior to December 10, 2004. See MPEP § 706.02(l)(1) for
**>rejections under 35 U.S.C. 103 based on prior art under 35 U.S.C.
102(e), 102(f) or 102(g) and< prior art disqualified under 35 U.S.C.
103(c).
19. Double Patenting, con’t.
The term "commonly owned" is intended to mean that
the subject matter which would otherwise be prior art to
the claimed invention and the claimed invention are
entirely or wholly owned by the same person/entity at the
time the claimed invention was made.
If the person/entity owned less than 100 percent of the
subject matter which would otherwise be prior art to the
claimed invention, or less than 100 percent of the claimed
invention, then common ownership would not exist.
20. Commonly Owned con’t.
Therefore, common ownership requires that
the person/entity own 100 percent of the prior art
subject matter and 100 percent of the claimed
invention.
The patent law requirement for common
ownership at the time the claimed invention was
made is intended to preclude obtaining ownership
of subject matter after the claimed invention was
made in order to disqualify that subject matter as
prior art against the claimed invention.
21. Effect of Co-Ownership on
Patent Litigation
35 U.S.C. § 281 Remedy for infringement of
patent.
A patentee shall have remedy by civil action
for infringement of his patent.
22. Remedy for Patent Infringement
Co-Ownership “Standing” Issues- Is the patent owner a
co-owner suing alone?
All co-owners must bring suit together –a single co-
owner suing lacks standing (FATAL)
Examples: Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710,
722 (Fed. Cir. 2008) (because patent owner had co-owner,
district court granted JMOL on lack of standing overturning
jury verdict of $1.5 billion- was affirmed); also Univ.
Pittsburgh v. Varian (Fed. Cir. 2009) (co-owner Carnegie
Mellon was inadvertently left off)- the case was tossed for
lack of standing
23. Ownership and Licensing Issues
• The Federal Circuit has found that assignment
requirements can exist even in the absence of a signed
contract. As a result, a collaboration between two
unrelated institutions raises issues as to ownership.
• Unless there is an agreement to the contrary, the rights
of the several joint assignees of a patent are governed
under 35 U.S.C. § 262.
• This means that one co-owner (or co-inventors) can sell
the invention without having to pay anything to other co-
owners (or co-inventors). Similarly, one co-owner can
grant a license to a company without the consent of the
other co-owners and without having to give the other co-
owners a share of the license royalties (but license is non-
exclusive)
24. Ownership and Licensing Issues
•
It is important for an institution that has outside
collaborations to consider ownership issues (and
licensing terms) carefully, particularly when the
institution is seeking to license technology arising
from such collaborations.
This is especially true if the licensee or potential
licensee is a co-owner, because if the licensee/co-
owner terminates the license agreement or does not
take a license agreement, they are free to use or
license the product on their own unless there is an
agreement to the contrary.
25. Ownership and Licensing Issues, cont.
•• Additionally, a potential licensee may be less likely to
take a license, or may offer a much lower royalty, if another
co-owner has the ability to use or license the same
technology to a competitor. Therefore, these problems
should be avoided if possible, such as by not collaborating
unless a research agreement or contractual arrangement is
made in advance.
• International rights can be effected because some
countries require all owners to consent to any licensing
agreement and/or to assigning rights.
26. Ownership and Licensing Issues, cont.
Summary-
- Potential loss of bargaining power
- One co-owner may freely grant a license without the
consent of the other co-owners
- One co-owner (or co-inventors) can sell the invention
without having to pay anything to any other co-owner (or
co-inventor)
- Loss of ability to grant any kind of license in some
countries without approval of co-owners
- Apprehension by potential licensees
27. Policies to Consider
Do we own it?
Work from previous employer?
PI transplant may bring research program over
Possible joint inventorship (university or industry)
If joint with industry, we don’t file
Offer to joint holder, then put in-abeyance
If joint with another non-profit, seek IIA
Who leads?
How many owners?
What’s dilution (UC San Diego)
28. Curing Joint Ownership Issues
Some issues can be cured after joint ownership arises,
and some can only be cured/prevented if proactive
measures are taken; therefore-
Avoid or Cure Joint Ownership Problems (Avoiding
Disaster)
29. Curing Joint Ownership Issues
Possible Approaches-
A. Carve out the inventive contributions into separate
patent applications to limit the overlap of claim ownership.
B. Eliminate the material contributed by the other party
C. Determine if the others are really inventors; if not, do
not add them and there is no joint ownership issue.
Remember that you must name the correct inventors
D. Assign the Inventions to One Party in a Collaboration
Agreement or License (best) or in an Agreement once the
issues arises
30. Panel Discussion- Co-ownership
- Licensing Terms to Avoid Co-Ownership or Co-
Ownership Issues
- Collaboration Agreements
- Methods for Handling Patent Applications
When Co-ownership Was Unexpected
- Foreign Rights and Responsibilities
- Horror Stories (and some successes)
- Why the University of Virginia has never had
any of these problems