[Patent Talk] How to Prevent Disputes over Jointly Owned Patents

A jointly owned patent is a single patent owned in common by multiple parties. Joint ownership mainly arises either originally, when an invention is made jointly and filed jointly, or when an invention made by one person is filed and a share of it is later assigned to another. Because a patent is an intangible property right, however, special rules apply to the working and disposal of a jointly owned patent, and care is needed. Two hypothetical cases illustrate this.

Friends A and B jointly completed invention X. Believing it had business potential, B filed a patent application for invention X alone, without consulting A, and obtained a patent. On learning of B's business success and patent for invention X, A claimed joint ownership of the patent against B. In this case, B's patent is invalid because it results from a patent application filed by a person not entitled to the patent. Where the right to obtain a patent is jointly held because the invention was made jointly, all the joint holders must file the patent application together (Article 44 of the Patent Act), and violating this is a ground for invalidation.

C made invention Y alone. With no plans to commercialize it right away and finding the cost of a patent application burdensome, C assigned a 50% share to friend D, and they filed a joint application, splitting the filing costs in half. After registration, D commercialized invention Y with great success. C demanded 50% of the profits D had earned from the patent. In this case, absent a special agreement, D has no obligation to share the profits with C, because where a patent is jointly owned, each co-owner may work the patented invention without the consent of the other co-owners (Article 99(3) of the Patent Act). Feeling wronged, C approached manufacturer E to try to conclude a license agreement in order to monetize the patent. However...

LNB IP Law Firm