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Federal Circuit Clarifies Joint Ownership Rules with a 'Resounding Yes'

Oct.10.2008

An inventor of one or more claims of a patent is an co-owner of the entire patent even without contribution to all of the claims, a Federal Circuit panel concludes in Lucent Tech., Inc. v. Gateway, Inc. (No. 2007-1546, -1580; September 25, 2008).

To counter Lucent's infringement claim, Microsoft alleged that Lucent lacked standing because Fraunhofer allegedly co-owned the patent. Microsoft based its allegation on a joint development agreement ("JDA"). Under the JDA, the Federal Circuit found Lucent's predecessor, AT&T, had developed two claims of a patent and that two other claims were jointly developed with Fraunhofer. Despite this finding, Lucent relied on the century-old Supreme Court precedent holding that a patent owner cannot split up its ownership rights and assign different claims to different parties. Under this precedent in view of the JDA, Lucent argued that it owned the patent, and that Fraunhofer was merely a licensee, not a co-owner.

Applying more-recent Federal Circuit precedent - but ruling consistent with the older Supreme Court authorities - the Federal Circuit phrases the issue as "whether Fraunhofer is the owner of the '080 patent even though it did not contribute to the invention of some of the claims." The answer is a "resounding yes," according to the Federal Circuit, which holds that Lucent lacked standing in the absence of Fraunhofer. The Federal Circuit also provides some prospective guidance to future joint development participants, noting that AT&T had the option to file separate patent applications.

[ http://www.cafc.uscourts.gov/opinions/07-1546.pdf]

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