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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

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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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Re: Question about joint patent ownership
« Reply #2 on: February 26, 2021, 11:55:33 AM »
Thank you for your reply. So, from the inventor's perspective, the only way they would be guaranteed a reward for their joint invention (assigned to their respective employers) and licensed to a third company would be, I guess having companies A and B sign a contract that stipulates either:
(1) force all joint owners (companies) to share license revenues regardless of which company negotiated the license with the licensee. Then, each company would reward its employee (the inventor) based on its internal rules;
or
(2) force all joint owners (companies) to directly pay the inventors regardless of each company the inventor belongs to.

Is my understanding correct?

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Re: Question about joint patent ownership
« Reply #3 on: February 26, 2021, 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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Re: Question about joint patent ownership
« Reply #4 on: February 27, 2021, 12:35:31 AM »
Thank you for letting me know about the differences between the reward practices of companies and universities. In fact, I was interested in the case of universities but ended up asking as companies since I thought the reward practices were the same.

Even though it is customary for universities and government research labs who own the IP rights to pay the inventors of such IP, I guess this custom is limited to paying only their own employee, right? Therefore, to solve the issue I raised in my previous posts, a contract between both universities would still be necessary, right? That is, if only 'University A' licenses the joint IP to a third company, in the absence of a contract between the universities to share the royalties, the inventor from 'University B' would end up without any reward since there seems to be no law that will force 'University A' to pay the joint inventor from 'University B'. Is my understanding correct? Thank you.
« Last Edit: February 27, 2021, 12:37:10 AM by Roberto »

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Re: Question about joint patent ownership
« Reply #5 on: February 28, 2021, 06:19:36 PM »
I have seen agreements where universities sometimes say they will pay inventors from another university but usually that is only if there is a federal (US) grant.

Otherwise, it is most common for each university or company to only pay their own inventors.


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