Patents

Patent Co-Ownership: Good for some, bad for others.

August 01, 2011

We have found that Research and Development collaboration between multiple parties is becoming increasingly common. However, a properly drafted collaboration agreement is essential and that collaboration agreement must have strong IP clauses that consider foreign law and not just UK law. This is because patent applications in foreign jurisdictions may be filed to protect the results of the collaboration.

Although standard agreements are available e.g. the Lambert Toolkit from the UKIPO, careful consideration of the IP provisions is advised. Although the Agreements may cover matters arising in relation to a UK patent they have not necessarily been drafted taking into account how different laws in different jurisdictions provide different rights. This can lead to some nasty surprises. For example, in the UK, co-owners can individually work the invention but cannot licence it or assign it without the consent of the other co-owners, unless there is an agreement to the contrary. Therefore unless the collaboration agreement or another agreement is in effect, a company does not automatically have any ‘have made’ rights i.e. it cannot out-source production. Also, a non-productive co-owner e.g. a university does not automatically have the right to licence or assign the invention and it may consequently be unable to derive any income from the patent. However, in the USA co-owners can individually work, assign and licence the invention unless there is an agreement to the contrary. Therefore unless the collaboration agreement or another agreement is in effect, a co-owner has no exclusivity as another co-owner may licence a competitor. Another issue that should be considered is whether all parties need to be party to any court action concerning the patent. In some jurisdiction e.g. in the far east, any co-owner can start proceedings for infringement without the consent of the other co-owners, whereas in other jurisdictions e.g. USA all co-owners should be parties in the infringement proceedings. If you wish us to advise on the joint ownership, please contact Paul Higgin [email protected] or your usual patent contact at Swindell & Pearson Ltd.

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected]ents.co.uk or by telephone on 01332 367 051.