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   Multiple assignees, % not specified - default?
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AC
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Multiple assignees, % not specified - default?
« on: Jun 20th, 2005, 9:49am »
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Suppose there is an assignment of a patent to multiple assignees with just the standard boilerplate language "in consideration of $1 . . ." but the percentage interest to each assignee is not specified (or otherwise provided for in a separate agreement), is the default rule that the assignees will be deemed to take equal shares?  E.g., if 2 assignees, each takes half; if 3 assignees, each takes 1/3, etc.
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Isaac
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Re: Multiple assignees, % not specified - default?
« Reply #1 on: Jun 20th, 2005, 8:16pm »
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What do you think half of a patent share would mean?
 
The result probably depends on the exact language used, but
it's possible that the assignees would be tenants in common
which means that each has a complete right to exploit the
entire patent, but that the right is not exclusive.
 
Of course that would mean that each individual would need
cooperation from the others to sue someone, but that only one
assignee would be necessary to sign an agreement not to sue.
 
Sounds to me like a recipe for a disaster.
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Isaac
eric stasik
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Re: Multiple assignees, % not specified - default?
« Reply #2 on: Jun 21st, 2005, 3:52am »
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AC,  
 
If it is a US patent you are asking about:  
 
35 USC 262. Joint owners
 
"In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners."
 
http://www.bitlaw.com/source/35usc/262.html  
 
In other words, absent any agreement between the parties, each assignee owns 100% of the patent and can do with it what they like without the consent of the others.
 
This is why joint assignments of US patents should always be avoided.
 
regards,  
 
eric stasik
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eric stasik
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AC
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Re: Multiple assignees, % not specified - default?
« Reply #3 on: Jun 21st, 2005, 9:20am »
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Thanks for the responses - this definitely appears to be a tricky area.
 
Regarding my initial post, I was referring to situations where, for instance, Assignor transfers 100% of a US patent to Assignee A and Assignee B without stating the specific interest to each (e.g., 25% to Assignee A and 75% to Assignee B).  
 
If my memory serves me correctly, I thought I had read somewhere (maybe as a matter of contract or property law) that when no specific interest is stated in an Assignment, the default rule is that the assignees will be deemed to take equal shares (e.g., 50% to A and 50% to B) unless it can be shown that the parties intended otherwise.
 
Based on your responses, it would seem that the % interest to each assignee would not be particularly significant since it seems that each assignee has an undivided interest in the entire patent.
 
Anyone know of a situation where the % interest to each assignee would be important?
 
Thanks
Alex
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Isaac
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Re: Multiple assignees, % not specified - default?
« Reply #4 on: Jun 21st, 2005, 2:44pm »
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In order make a per centage interest meaningful, you would have to define what a per centage interest is really all about.
 
For the reasons that have been presented, by default such an interest would be meaningless.   A patent is a right to stop others from making, using an invention.   By default, half of the right is meaningless.
 
If the intent is that each party gets some per centage of the licensing fees from granting rights to others, then you would have to define that in your agreement.   Then the ownership per centage would have meaning.
 
In the case of real estate, the same kind of ownership shares can exist.  If property is held by multiple owners as tennants in common, each owner can use 100% of the property even if the owner has only a 25% share.  But for real property if the owners cannot get along it is possible to go to court and have the property divided up into shares (partitioned).  In that case it would matter whether an owner had a 25%, 50% or a 33.33% share.
 
Patents and real property are different because part ownership does not completely make sense and becasue as Mr. Stasik pointed out there is a federal statute telling us what the default arrangement is.   Real property is governed by state law, and may be a little different in different states.
 
 
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Isaac
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