Federal Circuit Affirms That Obligation-To-Assign Term In Employment Agreement Is Not Sufficient To Give Employer Standing To Sue For Infringement
On January 11, 2018, the United States Court of Appeals for the Federal Circuit issued an opinion affirming the district court’s decision that an obligation to assign, without an actual assignment, does not transfer ownership in a patent. Advanced Video Technologies LLC v. HTC Corp., appeal nos. 2016-2309, 2016-2310, 2016-2311. Ownership in a patent initially vests with the named inventors, each of whom is a co-owner of a pro rata undivided interest in the patent. Because each inventor owns a pro rata undivided interest, he or she may take actions without approval of any other co-owner. For example, the inventor may make or sell a product covered by the patent, non-exclusively license others to make or sell such a product, or transfer by assignment ownership to a third party. Where a patent is co-owned by more than one party, Federal Circuit jurisprudence requires that all co-owners must be joined to confer standing to bring a lawsuit against an alleged infringer.
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