All You Need To Know About Patenting Inventions Resulting From Joint Ownership

Often, bringing an invention to fruition is beyond the scope of a single entity alone. In such cases, two or more entities, by merging their combined financial, technical, and intellectual resources, manage to bring an idea to life. Assuming the invention is eventually granted a patent, the result is the joint ownership of the patent.

Naturally, there are many questions you can ask. For instance, who owns the patent? Do all partners have equal rights and powers? Can one partner unilaterally license the patent? As with most questions, the answer is not always simple and is dependent upon the specific facts. Nonetheless, here’s what you need to know about joint ownership of patents.

The Value of a Written Agreement

Just like it is the case with business partnerships, the single-most defining factor critical to the smooth working of the joint ownership of a patent is a thoroughly written agreement. For instance, let us assume the two co-creators of the invention had unequal contributions toward bringing the invention to fruition. Are these two inventors still to have equal responsibilities? The written agreement is the safest and most effective way to outline the rights and powers of each inventor.

The agreement can be prepared in such a manner that it clearly outlines the actions that the co-inventors can take unilaterally, as well as those decisions that need the approval of the other partners. Furthermore, those seeking to eliminate the entire premise of multiple owners to the patent can do so by including appropriate language in the written agreement. In case of an unequal contribution, sole ownership through the signing of an assignment is often recommended.

In the Absence of a Written Agreement

In the absence of a written agreement, the Canadian jurisdiction provides a set of default rules that will be applicable to the co-creators.

Withdrawing the Patent Application

The patent application cannot be withdrawn by one (or more) co-owners of the invention without the permission of the other owners. This is one reason why patent lawyers and agents maintain it’s important to correctly mention the names of all joint-owners.

Licensing the Patent

According to the default rules set forth by the Canadian jurisdiction, a co-owner can’t license the patent rights to a third party without the prior approval of the other co-owner(s). This highlights the importance of the written agreement.

Diluting Other Owners’ Interests

The owner of a patent can by no means dilute the interests of the other co-owners. For instance, if an owner decides to forego their ownership rights, and does so by assigning multiple parties to the patent ownership rights, it certainly qualifies as a dilution of the other partners’ rights. This is because the number of parties holding ownership rights increases.

If your invention is in the development stage thus far, or if the patent application hasn’t been filled yet, consider contacting a patent agent or lawyer. Ownership can be clearly defined and appropriate agreements made to avoid the possibility of future discord.