Memo: Ownership of Patent Rights | jdickins | July 23, 2012

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Memo: Ownership of Patent Rights

As with copyrights, the basic elements of the patent infringement cause of action consist of a showing by the plaintiff that:
the invention at issue is protected by patent rights; the plaintiff is the owner of the rights; and the defendant’s actions violated (or would violate, if they have not yet taken place) plaintiff’s rights.
We spent a fair bit of time, in the copyright section, looking closely at several features of copyright law dealing with the question of copyright ownership – the question of joint works and joint ownership, the “work for hire” doctrine, and the requirement that all transfers of ownership (not including non-exclusive licenses) must be in writing and signed by the transferor. Patent ownership questions take similar form, although the substance of patent law is somewhat different than that of copyright law. We will not be looking at any of the issues surrounding patent ownership – not because they are unimportant or uncontroversial, but because they generally follow the same structure as copyright ownership questions, and I believe that our time is better spent on those issues (novelty, non-obviousness, infringement) where patent law diverges more substantially, in form and structure as well as substance, from copyright. Here is a brief summary of the main rules governing patent ownership. Initial Ownership. Copyright rights, you will recall, vest initially in the author or the authors of the work. Patent rights, of course, go initially to the person or persons submitting the patent application and to whom the patent, when issued, is sent. Under 102(f), the applicant(s) must be an “inventor” of the invention described in the patent application. By long-standing interpretation of the word “inventor,” only natural persons – i.e., real human beings, as opposed to fictional persons – can be “inventors.” As a consequence, corporate persons – corporations, partnerships, LLCs, etc. – cannot apply for patents, because they cannot be “inventors.” Joint Inventors. Like copyright law, patent law embraces the concept of collaboration between individuals in the production of a single invention through the concept of joint invention, which has been described by one court as “one of the muddiest concepts in the muddy metaphysics of the patent law." Mueller Brass Co. v. Reading Indus., 352 F. Supp. 1357, 1372 (E.D. Pa. 1972) . A good definition was provided in Monsanto Co. v. Kamp, 269 F.Supp 818 (D.D.C. 1967):
“A joint invention is the product of collaboration of the inventive endeavors of two or more persons working toward the same end and producing an invention by their aggregate efforts. To constitute a joint invention, it is necessary that each of the inventors work on the same subject matter and make some contribution to the inventive thought and to the final result. Each needs to perform but a part of the task if an invention emerges from all of the steps taken together. It is not necessary that the entire inventive concept should occur to each of the joint inventors, or that the two should physically work on the project together. One may take a step at one time, the other an approach at different times. One may do more of the experimental work while the other makes suggestions from time to time. The fact that each of the inventors plays a different role and that the contribution of one may not be as great as that of another, does not detract from the fact that the invention is joint, if each makes some original contribution, though partial, to the final solution of the problem.”
Notice that, unlike copyright, there is no mention of the “intention” of the collaborators. Sec. 116 provides:
“When an invention is made by two or more persons jointly, they shall apply for patent jointly . . . Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.”
Transfer of Patent Rights: Like copyright rights, patent rights are treated as personal property. See §261 (“Subject to the provisions of this title, patents shall have the attributes of personal property”), and, like copyright rights, they are freely transferable. See id. (and all transfers must be in writing):
§261 Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. . . . A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer authorized to administer oaths . . . shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent. An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.
While corporations and other fictional persons cannot apply for patents, they can (and often do) own patent rights (which they have obtained by assignment or other transfer from the inventors). (Notice that §261 permits even the rights in patent applications to be transferred – allowing an inventor, for example, to apply for a patent and then immediately turn around and transfer all rights in the application and the patent that may (or may not) issue from it to a third party). There is no equivalent in patent law to copyright’s “work for hire” doctrine; employers do not automatically, by operation of the statute, obtain the patent rights associated with inventions invented by their employees. Their ownership rights must be derived from the inventor(s) themselves, by assignment or transfer.
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June 14, 2013

Professor David Post

2012-07-22

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