Deck 19: Patent Ownership and Transfer

Question 1

If Rick believes that he is the actual inventor of an invention but Connie copied his invention and filed an application first, Rick should initiate a ______ proceeding to determine who is the true inventor.

Answer 1

derivation

Question 2

Jake and Erin are joint inventors who hold a patent but have no agreement as to licensing or transferring it. May Jake transfer the patent to Toby without Erin's permission? Assume Jake receives $500,000 for the patent. Must Jake share this money with Erin, his co-inventor? Discuss.

Answer 2

In the absence of an agreement to the contrary, each joint owner of a patent may sell it (or use it or license it, etc.) without the consent and without accounting to the other owners . Thus, it is critical for parties to have an agreement. In this case, Jake will be able to retain all $500,000 without accounting to Erin for any part of it.

Question 3

If an employee is directed to solve a problem for an employer, and an invention results from the employee's work on the project, the employer will own the invention, even if the parties had no agreement as to which would own inventions.

Answer 3

True

Question 4

Why should one record a patent assignment with the USPTO?

Question 5

Vic is a patent owner. He may license one party to make the invention, and another party to sell the invention.

Question 6

Patent assignments must be recorded with the USPTO to be effective.

Question 7

If a patent is licensed by Chris to Dee, the instrument must be in writing.

Question 8

To be a joint inventor, individuals must make the same type or amount of contribution to the invention.

Question 9

Raoul and his employer, ABC Co., did not agree as to which of them would own inventions invented by Raoul while "on the job." Raoul invented a new dripless candle. Who owns the invention? What rights, if any, might the other party have?

Question 10

What is a "shop right"? When does a shop right usually arise-by agreement or otherwise?

Question 11

Ted and Tom are joint inventors who own a patent. Either one of them may sell the patented invention without the consent of the other.

Question 12

Why do statutes require invention promoters or developers to disclose their customers' success rates in receiving net financial profit as a result of the promoters' services?

Question 13

The USPTO will take action against unscrupulous invention developers or promoters.

Question 14

Steven granted a security interest in his patent to Bank of America when he borrowed money from the bank. What does this mean?

Question 15

How did the America Invents Act make it easier for the true owner of an invention (for example, IBM) to file a patent application?

Question 16

If a patent is sold by Adam to Beth, the instrument must be in writing.

Question 17

In what way did the change under the America Invents Act from a "first to invent" to a "first inventor to file" system reduce litigation?

Question 18

ABC Inc. has instructed its employee, Paul, to invent a new cell phone. ABC is a joint inventor along with Paul.

Question 19

What is the difference between a patent assignment and a patent license?

Question 20

Because patents have the attributes of property, they can be owned, sold, licensed, or devised by will.

Question 21

Assume that Dell Computer has a shop right in a patent. If the patent is infringed by ABC, who sues for infringement?