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WinTech Legal Insight for Start-Up and Established Technology Businesses

Joint Ownership of Patents in the U.S. and Abroad

Posted in Patent Counseling & Strategies

In the United States, when an invention is made by two or more persons jointly, they shall apply for a patent jointly under 35 U.S.C. 116. The Patent Act states in 35 U.S.C. 262:

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.

One of the notable features of jointly owned U.S. Patents are that joint owners are free to unilaterally make, use, offer to sell, sell or import the patented invention without the need for consent from the other owners.  Similarly, joint owners are free to unilaterally license or assign their interest without the need for consent from the other owners.  However, in other countries, an owner’s right to make and use, license, or assign may vary significantly, and the owner may have an obligation to share profits.

In Canada, an owner of a jointly owned patent can assign his or her interest in a patent without consent from the other owners, unless that assignment would dilute the other owners’ rights.  Thus, in contrast to an owner of a U.S. Patent, an owner licensing a Canadian Patent to a third party would require the consent of the other owners.

In the United Kingdom, joint owners are free to use their patent rights without the consent of the other owners.  However, granting a license, assigning, or mortgaging to one’s share of patent rights requires the consent of all the co-owners.

In Japan, under Article 73 of Japan Patent Act, joint owners of a patent are free to use the patented invention, but require the consent of all co-owners to license, assign, or establish a right of pledge the owners share.

Under Article 15 of the Chinese Patent Act, joint owners of a Chinese Patent are free to make and use the patented invention without consent or an obligation for accounting to the other owners.  Further, an owner may grant a non-exclusive license to a third party without the consent of the other owners, but the owner has an obligation to share profits generated by the license with the other owners.

It is clear from the divergent patent joint ownership rules for the various countries discussed above that these rules should be carefully be considered when obtaining a patent.  Further, these joint ownership rules should also be considered when licensing, purchasing, or obtaining a security interest in a jointly owned patent.  As many issues of joint ownership can be resolved by agreement, one should consult a Patent Professional prior to filing a patent or obtain rights for a jointly owned invention.