Lutherville Timonium, MD asked in Patents (Intellectual Property) for Maryland

Q: If there are two names on a patent do both names need to be involved with the actions of the patent?

One of the people on the patent seems to be doing negotiatining with the said invention with out conferring the other name on the patent.

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: If by "names on the patent", you mean that there are two inventors -- then no.

The patent rights belong to the inventors unless the inventors assign their rights to someone else. Most patents have inventors that are employees that assign their rights to their employers. But there are many other times where all the inventors assign their rights over to some company. Sometimes one inventor assigns that inventors rights over to the other inventor.

If there has not been any assignments and the rights are still with the two inventors. Then you have a mess. In that situation, either inventor can license another party or transfer rights to that party to allow that party to use the invention. If inventor A licenses company AAA, then AAA pays money to inventor A but inventor A does not need to share with inventor B. On the other hand, inventor B can assign rights over to company BBB and then BBB can use the invention without seeking a license from inventor A.

Neither inventor A or inventor B can grant exclusive rights to use the patent without getting the signature of the other inventor.

It is sloppy to have a situation where the rights are still with the individual inventors but it happens.

I hope that this helps.

Kevin E Flynn

Stephen E. Zweig
Stephen E. Zweig
Answered
  • Patents Lawyer
  • Los Gatos, CA

A: Expanding on Kevin's answer a bit.

Look up the patent status at the USPTO. One way is to use public PAIR. This is at: https://portal.uspto.gov/pair/PublicPair . Here you can enter the patent number and then look at the various records associated with the patent. These should show if the patents are still jointly owned by the two inventors (default situation with no assignments), or not.

Both inventors may have assigned their rights to a corporation. Alternatively, one inventor may have given their rights to another inventor. Alternatively, they may be a partnership, or one inventor may be a minor or a spouse of the other, and so on.

I'm based in Silicon Valley, and I see many situations where two or more inventors have an idea, decide to file for the invention first, and then wait to see if the design can get funding before starting a company.

Depending on the patent assignment status and other agreements between the inventors, almost anything is possible.

Steve Zweig

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