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Avoiding Joint Ownership of Patent Assets

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Multiple inventors typically contribute to the inventive subject matter of a patent or patent application. All individuals contributing to the conception of subject matter set forth in the claims of a U.S. patent application must be named as inventors. In the absence of an assignment of rights to a patent or patent application by multiple inventors to a single entity, such a patent or patent application may remain as jointly owned or held in joint title.

Patent applicants should be aware that joint ownership of a patent by multiple parties typically complicates enforcement of such a patent. For example, an entity seeking a license under the patent may obtain such a license from any of the joint owners and without consent of any of the other joint owners. Similarly, an infringing party may obtain relief under the patent from any of the joint owners and without consent of any of the other joint owners. Accordingly, we strongly recommend that our clients have all individuals contributing as inventors to a patent application assign their rights in the patent application to a single entity such as a corporation or limited liability company (LLC).

We further recommend that new clients seeking a patent application with multiple contributors have a single entity formed (to hold title to patent assets) before we engage. A straight forward assignment from the multiple contributors to the single entity for recordation in the U.S. Patent Office may avoid the complications of joint ownership. Having a client formed as a single entity (e.g., instead of multiple individuals) may also avoid potential legal conflicts arising from representation of multiple individuals, simplifying our engagement to undertake such a patent application matter.

Additionally, we recommend that our clients employing individuals that may be contributors to a patent application have employment agreements in place that include assignments and obligations to assign rights to patent applications for subject matter developed by the individuals in the course of their employment.

To learn more about patent ownership in the United States, or to speak with a patent attorney about your particular invention or situation, please contact us at 503-439-6500 or info@bltg-ip.com. We are happy to provide a free consultation.

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