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.
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