Insight
Unlawful patent ownership and how to avoid it
The development of new inventions is often characterized by the cooperation of different parties. It is advisable to agree on the ownership on potential inventions already before the cooperation is started in a cooperation agreement to avoid intensive discussions or even a suit regarding unlawful ownership later when a patent application shall be or has been filed. If one party filed a patent application without having the sole right on the invention and often without informing the other party, the other party can file such suit with a national Court or the Unified Patent Court (UPC). A complicating factor may be, that the party left out of the application may only become aware of fact that an patent application has been filed after 18 months, that is when the application has been published by the Patent Office. It can then be challenging to gather information and evidence proving (co-)ownership of the application.
True owner
In unlawful ownership suits, it has to be clarified who owns the invention and, often even more complicated, who contributed to the invention. This has to be proven in detail to the Court. In consequence, an application may be transferred in full to the true owner, or the parties may become co-applicants and co-patentees.
If parts of an invention have already been researched or developed by one party before the cooperation starts, it may be advisable to file a patent or utility model application before the cooperation starts. Priority of this application can be claimed later, within a year from the filing date of the priority application, when a common application of the cooperation partners is filed. Alternatively, the early application can be withdrawn or transferred to the other party, if it was agreed that this party shall be the sole applicant of the common invention.
Minutes
Further, it is advisable to draft minutes of even brief meetings and to prepare phone notes or notes of videoconferences so that it is possible to evaluate later in detail who provided which contribution to the invention. Keeping dated records of your own R&D work and ideas is equally important. The significance of the different contributions may change during examination proceedings of the application, depending on the grantable invention. For example, if only particular parts of the invention are found patentable, the ownership might shift. The Court deciding on an unlawful ownership suit has to take all these aspects into consideration.
The attorneys of V.Osupport with the drafting of cooperation contracts, accompany cooperation processes and the development of IP strategies. In case of potential unlawful ownership the attorneys of V.O. support in finding an amicable solution between the parties or (co-)represent the client in Court proceedings.
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