Co-Owners Messing with Patent Rights

Assume there are two co-owners to a patent that has never been licensed and one co-owner “waives all right, title, and interest” in the patent, what result?

  1. The remaining co-owner now has full exclusive rights to assert the patent; or
  2. The patent will be deemed granted to the public and therefore unenforceable.

The reason I ask this question is that this is what was alleged to have happened in the StoneEagle case.  That case involves a dispute over ownership.  In particular, StoneEagle’s brief indicates that “[b]y agreement dated July 15, 2010, Defendants waived all right, title, and interest in StoneEagle’s subsequently-issued patent.”


47 thoughts on “Co-Owners Messing with Patent Rights

  1. 11

    I work in university tech transfer, and have seen lots of agreements, under which jointly-owned inventions are jointly managed. Too often, they include this exact language (my office does not) – usually in a context where the parties are sharing patent costs, and if one party decides to quit paying, it “waives all right, title, and interest” to the IP. I always wondered what would happen if litigation ever arose, after such an event, and if there were any case law on that. Surely the parties using agreements with that language, are assuming that the remaining party has all rights. But are they correct? Great question, Dennis.

    1. 11.1

      Bruce, there is a difference between legal title and an equitable interest. Take a trust. The title is held by the trustee. One or more beneficiaries have an interest. Even if one or more disclaim their beneficial interest, the title is unaffected.

      The university situation you speak of expands the scope to include obligation of support by the silent partners. The title can still remain in the one entity while the benefits and support are waived.

      Legal disclaimer is governed by statute. It require ALL owners to sign.

      1. 11.1.1

        The university situation you speak of expands the scope to include obligation of support by the silent partners.

        As Stanford painfully learned, the actual words chosen really so matter.



          “really so matter” should read “really do matter”

          (here’s hoping a simple edit option will one day be available)


            Agreed (with both the ‘exact word’ thing and the wish for an ability to edit). And I have seen variations on this language, some that include waiving actual title, and some that do not. But I am unaware of any case law, where the remaining university or its licensee sued an infringer and the waiving university’s rights became an issue. I think it could be an interesting (i.e. expensive and litigatable) issue.

  2. 10

    It depends upon context. Each joint owner can do what they want with the patent without any accounting to the other. They each own 100% of the patent.

    Therefore, one party could unilaterally dedicate the patent to the public by saying that the technology protected by the patent is now available for all for no royalty. Now, the other owner is still 100% owner and could still license the patent. However, any potential licensee who performs competent due diligence would know that they can just bypass the remaining owner.

    Further, are both owners required for enforcement? Sorry, I forget all the details of joint ownership. If that is the case, then all it takes is one party to refuse to enforce and the patent is effectively dedicated to the public.

    1. 10.2

      Further on the enforcement angle – the action as stated removes that second owner from the enforcement picture.

      Again, it takes a restatement of the given facts to incur the ‘messing with’ that seems to be the aim of the post.

      1. 10.2.1

        My hypothetical was drafted completely independently of any facts of this case. I was just pointing out that since there is no accounting or equity concerns, one owner could dedicate the patent to the public without the other owner’s permission.

        Whether the facts in the cited case bear that out is another story. And checking, it appears they likely do not.


          Thanks Lionel, in other words you are agreeing with my earlier post.

          I appreciate that (in a completely non-controlling way, of course). 😉

  3. 9

    Dennis, false premise.

    Gillman never had legal title.

    All he ever gave up was an equitable claim to co-ownership that had to be perfected to become legal.

    StoneEagle received legal assignment from Allen. Allen was the sole named inventor. He had 100% legal title from the beginning by statute.

    1. 9.1

      Assume two named inventors. They are by statute the legal owners of the patent.

      Both have to sign a legal disclaimer to be effective.

      However, both have a right to license and both have to participate in lawsuits. But neither can unilaterally dedicate the patent to the public.

      1. 9.1.1

        Ned – If neither can unilaterally dedicate the patent to the public, then what does you assertion that both have the right to license mean?

        If you mean they both have the right to unilaterally license, then doesn’t that mean they have the right to set the terms of those licenses, up to and including a royalty free license to anyone, without notice or request?


          Les, that both may license has always been a problem. But it does take all owners to disclaim.

          A categorical statement that a co-owner will license the world cannot be have the same effect as a statutory disclaimer. From this, I would think the courts could fashion a remedy whereby on co-owner could not unilaterally sabotage the entire value of a patent.

    2. 9.2

      Ned, you continue to make critical assumptions that are beyond the fact pattern as we know it with your statement of “Gillman never had legal title.

      We simply do not know that.

      1. 9.3.1

        Seems to beg the question then of why the statement of Stone Eagle would even need to be made…

        Given that many other documents pertaining to the actual relationship of the parties were provided to the court, it seems to be a more fair assessment that some type of arrangement of ownership was contemplated (and executed) by the parties.

        We do know that we do not know all of the facts.


          anon, we do know that neither StoneEagle, nor Allen, nor Gillman ever alleged that Gillman had legal title. Gillman forswore such, in fact.


            Two items to firmly keep in mind, Ned (and to keep you from your naked assumptions and weed-diving conjecture):

            We do not know all the facts.
            We know that we do not know all the facts.

  4. 8

    I’d treat it as a quit-claim deed would be treated. No dedication to the public, the other owner gets everything.
    Making special rules for patents, which are after all personal property leads to lots of problems.

  5. 7

    Easy. The patent life should be halved, half the time going to the remaining co-inventor, half the time going to the public. For added fun, make the public’s time come first.

    1. 7.1

      Jake2 – pharma would love that.

      ( may I suggest a basic course in patent law for you – you appear to not understand what is going on in the slightest manner)


          And here I was going to overlook your insults by posting a joke.

          Geesh, some people have no sense of humor.

  6. 6

    I think the answer is 1. He/she didn’t say they dedicated it to the public. They said they relinquished their rights. A patent is co-owned with equal rights for each inventor, and an inventor does not have to have the other inventors to license the patent.

    So, in balance, unless an inventor dedicates their rights to the public, then the other inventor still has their rights.

    So, in this case, given the way the patent rights are set up, 1 is the answer.

  7. 5

    Waived those rights in favor of whom? The answer will depend on the nature and purpose of the writing and, considering the ambiguity of the “waiver”, will probably depend on parol evidence.

    1. 5.1

      If one waives a right, that that right is waived in relation to that person.

      One cannot waive the right of another.

      Logic dictates away from 2 and towards 1. While affirmative acts of one recognized co-owner can be averse to another, non-affirmative acts are likely not to be so read based on simple equity of the right. As the right to enforce is only waived by one party and not the other, that other party’s right to enforce cannot be over-read to be assumed to be eviscerated in the stated problem. Lacking affirmative intent may be key.

      Of course, if one co-owner really wanted to mess with the others (and perhaps driving to a possible conundrum in equity that may have been desired in the post), the one owner could draft a royalty free ‘paid up in full’ license to any and everyone. One might then look to tortious interference principles and a lack of any real consideration may play out in equity (come to the table with clean hands and all that).

      In the particular case, the waiver occurs prior to any possible legal action for the patent taking place (the patent right being still inchoate at the transfer time), and this no dedication of the later matured and legally fulfilled right could have taken place.

      1. 5.1.1

        The other owner’s right is not waived, he or she will just have no ability to license the patent to anyone who is not a sucker and will have no recourse against the dedicating owner.



          You are either agreeing with me (again) or you are changing your mind and discussing particulars (and thus would be incorrect, for reasons I have already provided) – can you clarify?

  8. 4

    Well obviously it’s a matter of construction, so I would assume the context in which he made the statement is of utmost importance. Without any other evidence as to intent my interpretation would be that the patent rights are negative rights – to prohibit others. Inventor A’s surrender of his right to sue for infringement does not dedicate the invention to the public. The only way you could construe the invention as being dedicated to the public would be to call the waiver language a license, and if he wanted to license he could have licensed. I view it only as B becoming the sole holder.

  9. 3

    Fascinating question. In the USA, the default rule is that co-owners of a patent can each independently grant licenses or assign their ownership, without the consent of the other co-owners. So in principle a co-owner could grant a royalty-free license to all comers (or dedicate his portion of the patent to the public, or grant the public a covenant not to sue), thus undermining the ability of the other owners to enforce the patent against anyone (since an accused infringer could say he has a valid license, or alternatively that the first co-owner needs to be joined in the infringement suit but can’t be because of the covenant). If the waiver in the hypothetical constitutes such a license grant/dedication/covenant, then the gig is up for the other co-owner. I would hope for the other owner’s sake that there’s a contract in place to avoid such a situation, or that he has a state law claim against the waiving co-owner for the diminution in the value of his asset (the patent).

    If the waiver is construed as the first co-owner gifting his rights to the other co-owner, then yes, that person would now have full right in the patent; but I don’t know why a priori the waiver should be so construed, i.e. why, absent a contractual provision giving full ownership to the other co-owner in such a situation, that that person should by default become the sole owner upon the first co-owner’s waiver. If the first co-owner died, his inheritors or his estate would become the owners of his share, in accordance with his will or the laws of intestacy. And as noted above, he can transfer his rights to anyone else. The other co-owner has no particular preferred position in such cases; I can’t think why in this case of waiver the other co-owner should automatically get those rights just because the first co-owner disclaims them, particularly when it would have been easy enough for CO1 to assign his rights to CO2 or for the matter to have been dealt with contractually beforehand. Maybe I’ve overlooked something (and maybe there’s case law on this.)

  10. 2

    Now, if the co-inventor had assigned their rights to the first co-inventor, then the rights would not have been dedicated to the public. However, each co-inventor is a joint owner of *all* patent rights. Therefore, the answer is likely 2, since the co-inventor *waived* all their rights (and therefore, all patent rights). Scenarios like this are why the first thing you would want to do is get all inventors to assign their rights to a single entity/assignee whenever possible.

    1. 2.1

      I 2 agree with 2 that the answer is 2. [For U.S. patents, not necessarily others.]

    2. 2.3

      Agree with Heebs and others. If you have an undivided interest, you can dedicate the patent to the public (or license it to anybody) and screw your co-owners. We can debate the precise language necessary to achieve this, I suppose, but this kind of issue is why the importance of assignments and employment contracts can’t be underestimated.

      1. 2.3.1

        LOL – You mean that you (too) agree with me.

        Thanks Malcolm – and yes, the actual ‘precise language’ can be debated, but paying attention to the actual ‘precise language’ already present, my posts are the most accurate.

        Curious how much aversion you have to saying those three little words: anon is right.


          my posts are the most accurate.

          You have a severe mental illness and really need to see a psychiatrist.


            LOL – sure Malcolm – your aversion to “anon is right” is hilarious.

            It just galls you so!


          Study joint ownership. There’s a reason no one who is actually interested in exploiting a patent wants to jointly own patents ever.

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