Subject: RE: Licensing Model: Joint Copyright Assignments
From: "Lawrence E. Rosen" <lrosen@rosenlaw.com>
Date: Mon, 14 Apr 2003 21:40:31 -0700

> > I'm dealing with a similar assignment issue right now for a client. 
> > He's got a patent that he co-invented with another person.  The law 
> > requires that, in order to pursue a patent infringement 
> claim (which 
> > has recently become necessary), he must have the cooperation of his 
> > co-inventor.
> 
> Interesting.  What would have happened to your client if the 
> co-inventor could not be found?

Sorry, I said it incorrectly.  (I shouldn't write email after a long
day!)

The problem is that "in the absence of any agreement to the contrary,
each of the joint owners of a patent may make, use or sell the patented
invention without the consent of and without accounting to the other
owners."  That is why cooperation is required.  If an infringer can
simply go to a co-inventor and negotiate a license, an inventor's got an
impossible negotiating situation.  That's why the co-inventors need to
cooperate or, in this case, negotiate an assignment.  The client in my
example needs full control over the licensing and infringement
litigation.

So this isn't a situation where a co-inventor can't be found.  

There are procedures in the law for filing a patent application despite
the refusal of a co-inventor to cooperate.  

/Larry

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