Quick Hit: Massachusetts Case Litigating Spouse’s Interest in Invention.

I can’t find anything available on line that is not behind a paywall, so…  Recall that I’ve written here about how there’s an interesting question as to whether in a community property state the spouse of an inventor has an interest in inventions (and other IP).  Defendants have, so far unsuccessfully, taken quitclaims from the spouse in an effort to defeat infringement suits, as a result.

There’s a Massachusetts appeal pending where, from what I can tell from what I’ve found on-line, the spouse of an inventor is claiming that because funds from a joint bank account were used on the invention, she has an interest in it.  The case is Mazzu v. Mazzu, No. 2015-P-16011, and it is on appeal from the Suffolk Count Superior Court to the Appeals Court of Massachusetts.  Who knows what we will learn.

On a related note, while talking with a big-shot lawyer from Arizona, I learned that she includes spouses of inventors on assignments…

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “Quick Hit: Massachusetts Case Litigating Spouse’s Interest in Invention.

  1. 5

    The problem with the statutory argument, I think, goes something like this: patents have the characteristics of personal property… by statute… and that statute was written when community property schemes exist… Specifically:

    Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.

    Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
    35 USC 261

    I can get to the “right” result by arguing preemption, but I then run into that same statute…

    1. 5.1

      Not following your path Prof. Hricik.

      What is “the ‘right’ result” that you are aiming for?

      How does “preemption” even begin to help you when that very “preemption” has the direct effect of turning this into an item that will vary State by State (as discussed in Chisum)?

  2. 4

    This issue bleeds directly into standing to bring suit where the inventor (named A) was married (in this example, to the same spouse named B) for the duration of conception, reduction to practice, filing, prosecution, and patent issuance.

    B would need to be joined, and could potentially license the patent independently from A. B cannot be forcibly joined, and failure of joinder is fatal to standing. See STC.UNM v. Intel Corp.

    I recall at least one district court case that touched on this, and basically ignored state property law and refused to recognize this issue.

  3. 3

    Would a spouse have a copyright termination right? Would that right arise before the non-terminable part of the copyright? Would exercising of the termination right require both spouses to terminate the copyright or would one be sufficient?

  4. 2

    Would a spouse have an interest in a right of publicity generated during the marriage or is that personal to the originating spouse?

  5. 1

    David, I think the ownership of invention and the right to apply for patent statutorily inhers only in the inventor and the resultant patent is the separate property of the inventor regardless that the invention was made during a marriage. I think it is not relevant whether the inventor spent time during the marriage to develop the invention; nor do I think it is relevant that community property was spent in patent prosecution.

    That said, there is a concept called quasi-community property where separate property acquired during the marriage can be deemed community property. This may allow the spouse to have a community property interest in the issued patent. I think the most California attorneys believe that this is the case.

    1. 1.1


      What do you base your belief on?

      I am not being snide, but your grasp of property law is a bit weak at times and the notion that a patent is property does bring along with it a certain lack of “this is ‘special Federal property’ law domain.”

      In other words, as I pointed out way back in the Stanford v Roche discussions, even (or especially) Chisum indicated the necessary state law implications of this.

      I have the distinct feeling that this is just something that you “feel” should be different, but that you do not actually have a legal grounds for that feeling.

      1. 1.1.1

        Anon, once the patent issues it is the property of the inventor or his assignee. At this point, I do not think it is community property, but is probably quasi-community property.

        Anyhow, no law firm or corporation that I know of asks spouses of inventors to sign assignments of inventions or applications. But it is the usual practice in California to obtain the signatures of spouses on issued patents owned by inventors.


          …so in other words, you have NO legal basis for your attempted distinction, right?

          I mean, that is what I asked for – I did not ask for more running commentary or your views building on a base of an unknown legal foundation.

          One step at a time Ned – as I mentioned, your grasp of basic property law seems a bit sketchy at times, so I don’t want you to jump ahead too far without having your check your initial views.

          It is personal property – not some different and “special” ‘Federal property.’

          I suggest – much as I did way back when – that you review what Chisum wrote on the subject.

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