1. Home
  2. |Insights
  3. |Federal Circuit Clarifies Joint Ownership Rules with a 'Resounding Yes'

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

Client Alert | 1 min read | 10.10.08

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.

Contacts

Insights

Client Alert | 8 min read | 10.01.25

BIS Issues “Affiliates Rule” to Dramatically Expand Applicability of Entity and Military End-User Lists

On September 29, 2025, the U.S. Department of Commerce Bureau of Industry and Security (BIS) announced a sweeping Interim Final Rule (IFR), (the “Affiliates Rule”) expanding which entities qualify as Entity List or Military End-User entities, thereby subjecting those entities to elevated export control restrictions under the Export Administration Regulations (EAR). U.S. export restrictions applicable to entities on the Entity List, Military End-User (MEU) List, and Specially Designated Nationals and Blocked Persons (SDN List) now apply to foreign affiliates that are, in the aggregate, owned 50% or more by one or more of the aforementioned entities. An entity that becomes subject to these restrictions because of its ownership structure will be subject to the most restrictive controls that attach to any of its parent entities, regardless of ownership stakes....