Hey, That's My Invention! Avoiding Costly Ownership Mistakes With IP

When it comes to the inventive process, collaboration brings its rewards and its headaches.  Problems arising from co-ownership and co-inventorship are common.  Potential adverse consequences can include having to pay an overly high royalty to the collaborator, entry into the market of a competitor licensed by a co-inventor, loss of a patent infringement suit due to contested ownership or inventorship,  or even invalidation of the patent.  This article will cover co-ownership issues that can arise when parties collaborate, and the inventorship problems (often arising as a result of collaboration) that can occur in patent litigation.

Co-ownership in Deals

For a co-owned patent, both owners have transferrable rights to use the patented invention.  For example, if Acme Pharmaceuticals (Acme) and Busy Biotech (Busy) are co-owners of a patent, Acme can use the patented invention without permission from Busy.  Additionally, Acme  has the power to grant a non-exclusive