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Subject:
Patent Owership and Usage
Category: Relationships and Society > Law Asked by: patentdog-ga List Price: $5.00 |
Posted:
20 Aug 2006 04:55 PDT
Expires: 19 Sep 2006 04:55 PDT Question ID: 757827 |
Can a patent owner share his patent with another party? like 20% to be owned by the original owner and and 80% sold to another person? Is there a legal term for such arrangement? If it's doable, can one party exercise the patent rights independently without consent from the other party? |
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There is no answer at this time. |
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Subject:
Re: Patent Owership and Usage
From: bigblue-ga on 20 Aug 2006 09:39 PDT |
The process you describe is called assigning patent rights. It is done by contract which is completely separate from the original patent. It is extremely common that employees who develop products as part of their job are require to assign full patent rights to their employer who paid for the work leading to the patent. What you want to do is similar in concept. It sounds like you wish to sell partial patent rights to an investor. It's very easy. Just have a lawyer prepare a contract stating the obligations of both parties. If there is a dispute later, the contract will then become the basis for a lawsuit asserting that the offending party renegged on a contractual obligation. |
Subject:
Re: Patent Owership and Usage
From: patentdog-ga on 20 Aug 2006 19:43 PDT |
Thanks, Bigblue .. I think it's not difficult to understand two people can share the agreegated value of a patent. But in term of practicing the patent, it's not like I can use 20% of the right to produce 20 pieces of parts, and have the rest of 80 pieces pruduced by another party who has 80% right, to make a product that is composed of 100 parts. Can the 20% owner go ahead and produce the product without the consent of the 80% owner, and later on compensate the 80% owner by appropriate 80% of the income to him/her? Does the 80% owner have the say in the selling price, bacause he/she does have a vast interest in the IP? |
Subject:
Re: Patent Owership and Usage
From: myoarin-ga on 21 Aug 2006 02:41 PDT |
Patentdog, That is the sort of thing the contract will/should spell out. Normally, one would not expect the partners to both be indendently producing and independently selling superwidgets. That is inefficient production and marketing. The usual situation would be the inventor/patent holder allowing a producer to make and market the items with the contract defining the patent holder's share of profit, total sales (maybe), or a fixed fee that would insure him an income regardless of whether the things were produced or sold, OR a combination: a fixed fee plus something related to sales/income. HOpe that helps a bit. |
Subject:
Re: Patent Owership and Usage
From: socal-ga on 21 Aug 2006 11:37 PDT |
Hi The previous information is slightly incorrect. The USPTO will only record assignments for 100% ownership of a patent. If an assignment is given to 2 or more people/companies, EACH owns 100% of the patent and can sell, license or practice the entire patent WITHOUT consent of the other Assignees. What you want to do as the owner is LICENSE the patent to a person/company and spell out exactly what the license gives that person/company. The license can be exclusive or nor-exclusive, allow the practice of only a portion of the patent or the whole patent or any number of other arrangements. Licenses are not recorded with the USPTO and are ruled by contract law of that state. |
Subject:
Re: Patent Owership and Usage
From: patentdog-ga on 22 Aug 2006 09:31 PDT |
Thanks to all who has provided his/her valuable comments, I just got this one out from the USPTO website.... can anyone explain? especially in the regard of "In the absence of any agreement to the contrary" 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. |
Subject:
Re: Patent Owership and Usage
From: socal-ga on 24 Aug 2006 15:39 PDT |
This section of the Code is stating what I wrote above. Each person (inventor) or company who is an owner (assignee) owns 100% of the patent and can act without the consent of the other owner, IF there is no agreement saying otherwise. For Example, if 3 inventors are listed on the patent and they happen to work for two different companies or universities, and each inventor assigns his/her patent rights to their company or university, then EACH company/university owns 100% of the patent. Let's say Company XYZ wants to get a license to pratice the patented invention, then XYZ can go to either owner of the patent and purchase a license. The owner who sells the license gets to keep ALL the money from that license. If both owners are selling a license, then XYZ can go to the lowest seller. |
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