Patent Transfers: Who Actually Owns Your Patents?

Outright assignment transfers all rights, creating new owner with full standing. Exclusive licenses transfer rights in defined field; treated as assignment for standing if "all substantial rights" transferred. Non-exclusive licenses grant practice permission only. UCC Article 9 security interests use patents as collateral. Joint ownership lets each co-owner license independently. Our Intellectual Property practice handles transfer structure analysis.

Stanford v. Roche, 563 U.S. 776 (2011) held "I will assign" creates only future promise, while "I hereby assign" creates immediate present assignment. Stanford lost HIV testing patent ownership because researcher signed future-tense at Stanford but present-tense with Cetus. Filmtec v. Allied-Signal (Fed. Cir. 1991) established the present assignment doctrine. Many agreements use defective language. Our Intellectual Property Registration practice handles drafting.

Employee inventor assignments execute at hiring with present-tense language covering current and future inventions. California Labor Code § 2870 limits assignments to inventions using employer time, facilities, or trade secrets, excluding personal-time inventions. Joint inventor disputes under 35 U.S.C. § 116 create co-ownership where each can practice independently. Our Change of Ownership practice handles drafting.

Exclusive licenses grant rights to single licensee with licensor obligated not to grant similar rights, often covering specific fields, territories, or terms. Exclusive license with "all substantial rights" gives licensee independent standing to sue. Non-exclusive licenses permit multiple licensees, limiting enforcement. Royalty structures include running royalties, lump-sum, milestone payments, and minimum floors. Our Licensing and Contracts practice handles license negotiation.

35 U.S.C. § 261 provides unrecorded assignments are void against subsequent bona fide purchasers (BFP) who record within 3 months. Recordation protects against seller's later transfer to BFP, seller's creditors, and competing claims. USPTO Assignment Database provides public record under 37 C.F.R. § 3.11. Cross-border patents require recordation in each jurisdiction. Our Intellectual Technology practice handles USPTO and international filings.

Chain of title gaps appear during M&A diligence when assignments were never recorded, inventor assignments are missing, or corporate restructurings created undocumented transfers. Remediation includes locating original documents, obtaining nunc pro tunc assignments, and filing late recordations. Stanford v. Roche defects may require contacting inventors decades later. Bankruptcy transfers require court orders. Our Bio-Intellectual Property practice handles chain of title work.

Patent infringement standing requires plaintiff hold legal title or "all substantial rights" through exclusive license at filing. Lone Star Silicon v. Nanya Tech (Fed. Cir. 2019) established the test: exclusive licensee with rights to make, use, sell, and sue has standing; less than all substantial rights lacks standing. Standing defects mid-litigation produce dismissal or amendment. Joint ownership disputes require all co-owners join. Our Intellectual Property Litigation practice handles standing.

Royalty disputes arise over base calculation (gross vs net sales), product coverage, audit rights, and minimum payment compliance. Agreements should specify audit rights (annual), cost shifting when underreporting exceeds 5%, and dispute procedures. Quanta v. LG Electronics (2008) and Impression Products v. Lexmark (2017) shape exhaustion doctrine. International disputes implicate withholding tax and transfer pricing under IRC § 482. Our Licensing Law practice handles royalty audits.