By RIchard Allan Horning

1. PITFALLS OF JOINT
OWNERSHIP
OF TARGET IP
Richard Allan Horning IP Society
Palo Alto, CA
Palo Alto, CA
April 29, 2004
SPEAKER
Richard Allan Horning
Partner and Chair, Technology Practice Group
Tomlinson Zisko LLP
Palo Alto, California
RHORNING@TZLLP.COM

2. PATENT RISKS
• Have All Inventors Been Named?
• Have All Inventors Executed Valid
Written Assignments?
– Inventors Own an Undivided Interest
in the Absence of Written Agreement
– In Collaboration Agreements
Between Companies, Joint
Ownership May Arise by Operation of
Law If At Least One Employee is a
Co-Inventor
PATENT RISKS
• Co-Invention is a Matter of Patent
Law
• Co-ownership is a Matter for
Contractual Alteration
• Remember: Each Co-Owner Can
Make, Use, Sell, Etc., Without
Consent of Other Co-Owners and
Without Being Required to Account

3. PATENT RISKS
• Remember: Each Co-Owner Can
License Without Consent of Other
Co-Owners and Without Being
Required to Account
• Remember: No Co-Owner Without
Consent of Other Co-Owners Can
Grant an Exclusive License
PATENT RISKS
• Remember: Each Co-Owner Must
Join in Suits for Infringement
• Pointer: In Foreign Countries the
Rules May Be Different
– In UK and Canada Joint Owner Has
Right to Exploit the Patent but No
Right to License a Third Party
Without Consent, but Can Convey its
Ownership Interest

4. PATENT RISKS
• Remember: An Agreement Among
Co-Owners Giving One the
Exclusive Right to Grant Licenses
May Be Executory, and Subject to
Rejection in Bankruptcy Unless
Restriction Falls Within Sec.
365(n) Exception
– Exception Refers to Licensees, Not
Co-Owners
COPYRIGHT RISKS
• Authors of a “Joint Work” are Co-
Owners of the Copyright in the
Work
• Each Author Probably Must
Contribute Copyrightable Subject
Matter
• Each Author Must Intend that Their
Contributions be Merged into the
Whole, and that They Would be
Co-Authors

5. COPYRIGHT RISKS
• Each Co-Owner of a Copyright
Has an Independent Right, Without
Obtaining Consent, to Exploit the
Copyright
• Each Co-Owner is Entitled to
Grant Non-Exclusive Licenses
• Co-Owners of Copyright Must
Account for Profits from Using or
Licensing
COPYRIGHT RISKS
• Authors Can Determine Their
Intent by Contract
• Co-Owners May Reallocate Rights
Among Themselves, Provided it is
Done in Writing Signed by the
Owners of the Rights.

6. COPYRIGHT RISKS
• Duty to Account Applies to
Transferees
• Pointer: In Foreign Countries the
Rules May Be Different
– In UK Joint Owner of Copyright May
Not Even Exploit Copyright Without
Consent of Co-Owners
TRADE SECRETS
• Each Co-Owner of a Trade Secret Has
the Right to Use the Secret
• Although not Clearly Established,
Obligation to Account is probably
Outcome of Application of “Equitable
Principles”
• Co-Owners may Have an Obligation to
Co-Owner to Prevent “Unlawful and
Unreasonable Disclosure”

7. TRADEMARKS
• Joint Ownership of Trademarks is
Possible, but is Usually Counter to
the Theory of Trademark Which is
to Serve as a Designation of a
Source of Origin
• Joint Owners Will Need to Assure
Control Exercised Over the Nature
and Quality of the Goods or
Services
TRADEMARKS
• Pointer: In Foreign Countries the
Rules May Be Different
– Generally Other Counties Do Not
Accept Co-Ownership, and Thus
Agreements Giving Ownership to
One and Full Benefit to the Other Co-
Owner are Advised