Intellectual Property Law

Patent ownership may change by operation of law, including operation of foreign law

By McKee, Voorhees & Sease, P.L.C.

In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership.  The inventor of the patent died intestate as the only owner of the patent.  While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estate had to first transfer the patent rights to the heirs, and without such a transfer, there was no standing to bring suit.

The Federal Circuit vacated, noting that while § 261 states that patents are assignable only in writing, previous decisions have held that state law controls the issue of patent ownership.  Further, ownership may transfer by operation of law, and when a patent owner dies, it is state probate law that determines to whom ownership passes.

The court held that this concept applied in this case, even though it would be Japanese law that would determine ownership rather than a state's law.  Because it was unclear from the record whether an administrator is required under Japanese law when a person dies intestate, the court remanded the case to make that determination, which would resolve the standing issue.

More detail of Akazawa v. Link New Tech. Int'l, Inc. after the jump.

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Full post as published by FileWrapper on March 31, 2008 (boomark / email).