IICJ Paper Unintended Negative Consequences of Joint Ownership of a Patent Rodney L. Sparks, J.D., Ph.D., Senior Biotechnology Patent Counsel, University of Virginia Patent Foundation, USA

When one entity is a joint owner of a patent or pending patent application with another entity, there are many potential negative ramifications as to licensing, ability to enforce a patent by infringement litigation, as well as a potential negative impact during patent prosecution. Furthermore, naming the correct inventors on patents is important to ensure the validity and enforceability of a patent. Therefore, it is important for in-house counsel of an entity such as a company or university to have at least a general understanding of the effect of joint ownership on patent issues, as well as how to determine the true inventors of a technology. This article will review the some of the serious impediments on licensing, patent prosecution, and patent litigation that can arise when joint ownership results from collaborations with other entities, as well as ways to avoid the potential dangers of joint ownership.
Author
Rodney Sparks
Rodney Sparks
Dr. Sparks joined the University of Virginia Patent Foundation in 2004 from the well known intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in the cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he graduated from the evening program of the Loyola University School of Law. Dr. Sparks’ current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Patent Foundation and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law, where he is also a Lecturer. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the “Biotechnology,” “Interference,” and “Relations with the U.S. Patent and Trademark Office” committees of that organization. He also is a member of the Licensing Executives Society and of the Association of University Technology Managers. Dr. Sparks has served in various consulting capacities for several agencies of the U.S. government. He also recently served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org.
Company
University of Virginia Patent Foundation
The University of Virginia Patent Foundation is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university.
Country
USA More
Area of Law
Intellectual Property More
Business Sector
University More
Month Published
November 2009 More
Edition
Vol. 3, No. 9, Autumn 2009 More
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