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Question about joint patent ownership

Question about joint patent ownership
« on: February 21, 2021, 11:38:02 AM »
Suppose company A and company B jointly own the rights of a patent, and that this patent results from the work collaboration between inventor 1 (from company A) and inventors 2, 3 (from company B). Also suppose that both company A and B have internal rules to pay 30% of the revenues generated by patents to the inventors.

By the US patent laws, it seems that one of the companies, for example company A, could independently license the patent to a third company and not share its profits with company B. And that seems to be considered one of the perils of joint owning a patent.

My question is: if company A licenses the patent to a third company, although it is not required to give any money to company B, is company A required by law to pay the inventors 2 and 3 (so all inventors get 10%)? Or company A could give the 30% of revenue to inventor 1 and pay nothing to inventors 2, 3 since they are employed by company B?

Thank you,
Roberto

Brad

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Re: Question about joint patent ownership
« Reply #1 on: February 22, 2021, 02:26:50 PM »
The only possible thing I can think of is if there is federal funding involved with the creation of the invention then under federal guidelines (Bayh Dole Act) the inventors are supposed to get a portion of income but I am not fully sure if that applies to inventors from company B if only company A is licensing the patent all by themselves.  Further research would have to be done on that.

If there is no grant or federal funding than I am not aware of any rule that says company A must share income with inventors from company B.



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Brad

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Re: Question about joint patent ownership
« Reply #2 on: Today at 01:20:58 PM »
Yes I think so.  It is rare for most companies to share income with inventors (although this is standard for universities, government labs, and research based organizations).

If the inventors and companies enter into their own agreements to share income that should be possible. 
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Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

 

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