Intellectual Property Law

Chapter 19 Putting It Into Words Solution

Draft a paragraph to a client explaining why joint owners of a patent should always have
an agreement specifying their rights to exploit their patent.

By federal statute, if there is no agreement to the contrary, each of the joint
owners of a patent may make, use, license, offer to sell, or sell the patented
invention without the consent of the other owners and without accounting to
the other owners. Thus, if you do not have an agreement with your joint
patent owner, you run a significant risk that the other owner could sell or
license the patented invention without your knowledge or consent. Moreover,
if profits arise from such sale or license, the other owner would have no
obligation to share those with you or account to you for such. Thus, an
agreement clearly specifying each party’s rights to exploit the patent is
critical to protect against such a risk.