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May 27th, 2019, 4:13am

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   Terminal Disclaimer
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JS
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Re: Terminal Disclaimer
« Reply #5 on: Nov 27th, 2007, 6:19pm »
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Yes, you are right, you can have co-owners of terminal disclaimer patents, however, MPEP section 804.02 states:
 
terminal disclaimers must include a provision that the patent shall be unenforceable if it ceases to be commonly owned with the other application or patent
 
if you have co-owners who hate each other, could one owner reassign one patent to screw the other owner out of being able to enforce the patents?
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Isaac
Senior Member
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Posts: 3472
Re: Terminal Disclaimer
« Reply #6 on: Nov 27th, 2007, 10:23pm »
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on Nov 27th, 2007, 6:19pm, JS wrote:
Yes, you are right, you can have co-owners of terminal if you have co-owners who hate each other, could one owner reassign one patent to screw the other out of being able to enforce the patents?  

 
 
Those kinds of tricks would not be necessary.  All coowners have to participate to sue someone.  The surly coowner could simply refuse to participate in a law suit.
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Isaac
JS
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Re: Terminal Disclaimer
« Reply #7 on: Nov 28th, 2007, 11:59am »
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on Nov 27th, 2007, 10:23pm, Isaac wrote:

 
 
Those kinds of tricks would not be necessary.  All coowners have to participate to sue someone.  The surly coowner could simply refuse to participate in a law suit.

 
 
expanding the hypo - A and B co-own patents 1 and 2 which are linked by terminal disclaimer.  Patents 1 and 2 are licensed to C with the provision that the license is only enforceable against vaild patents.  A without B's knowledge reassigns patent 1 to D.  C upon finding out that A reassinged patent 1, C stops paying royalites.  
 
Can B even bring suit against C, since the patents are no longer commly owned by A and B?    
 
If B's ownership fulfills the commonly owned requirement, would B have to drag A and D into court with him?
 
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