State Law, Not the Patent Act, Governs Patent Ownership

In Akazawa v. Link New Technology International, Inc. (No. 07-1184, March 31, 2008), the Federal Circuit vacates a district court’s grant of summary judgment based on lack of standing and remands for further consideration. Relying on 35 U.S.C. § 261, the district court granted Link’s motion for summary judgment because Akazawa had not met his burden of proving the existence of a writing transferring ownership of the patent at issue from the patent owner’s estate to his heirs. The patent owner had died intestate and, under Japanese intestacy law, the patent owner’s wife and daughters were the only heirs. The heirs executed assignments that ultimately transferred their interest in the patent to Akazawa. The district concluded that, despite the subsequent transfers, without a proper assignment from the estate to the heirs, the estate held the patent.

The Federal Circuit holds that ordinarily state law determines patent ownership. Although Section 261 requires a transfer of patent ownership by assignment to be in writing, patent title can also be transferred according to state probate law. Because the patent owner was a resident of Japan at the time of his death, foreign law is controlling. Upon remand, the district court must resolve issues of Japanese intestacy law to determine whether Akazawa owned the patent and thus had standing to bring the infringement suit.