Jurisdiction – USA and India
USA – Co-owners of a patent are allowed to individually exercise all rights attached to the patent even without obtaining permission of the other co-owners.
As per 35 U.S. Code § 262, in the absence of a contrary agreement, each co-owner of the patent may perform the following acts without the consent of the other owners –
- Make the patented invention;
- Use the patented invention;
- Offer to sell the patented invention;
- Sell the invention within the United States;
- Import the invention into the United States.
While filing infringement suits
An infringement suit can only be filed if all the co-owners have agreed to join the suit (Willingham Star Cutter Company v. B Lawton, para. 17). If one or more co-owners do not voluntarily join other co-owners in an infringement suit, the others cannot institute an infringement action (Schering Corporation v. Roussel Uclaf SA). The co-owners may, however, sign an agreement to the contrary.
Co-owners cannot be forced to join the suit. As per Ethicon, Inc. v. United States Surgical Corporation, there are two exceptions to this proposition –
- When a co-owner of the patent has granted an exclusive license, he must permit the licensee to sue in his name because he “stands in a relationship of trust to his licensee.”
- If a co-owner waives his right to refuse to join the suit through an agreement, the suing co-owners can force him to join the suit against the infringers.
While licensing the co-owned patent
Any of the co-owners can license the patent to third parties without requiring consent from the other co-owners (Willingham). A third party can obtain a license for the patent simply by obtaining it from one of the co-owners.
Co-ownership over individual claims
Irrespective of the contribution to the claims in the patent, each co-owner owns the entirety of the patent as if he had been a true joint inventor of all the claims (Ethicon).
India – Each co-owner is entitled to an equal undivided share in the patent unless they have an agreement to the contrary (section 50(1)).
Suit for infringement – Without having to obtain consent from the other co-owners, each co-owner has the right to prevent third parties from making, using, offering for sale, selling or importing in India –
- The patented product, in case of a product patent; or,
- The product obtained directly from the by the patented process, in case of a process patent (section 50(2) read with section 48).
Contrary to the position in the U.S., co-owners in India are allowed to sue third parties for infringement even without the other co-owners joining the suit or consenting to the same.
License – A co-owner cannot grant a license under the patent without the consent of the other co-owners (section 50(3)).
Sale to third party – If a patented article is sold by one of the co-owners, the purchaser gets a legitimate right to the article bought by him (section 50(4)). This provision protects the interests of bona fide buyers.
Refusal by a co-owner to grant consent
If a co-owner is unable to obtain the consent of the other co-owner(s) for any act prescribed in section 50, then he/she can apply to the Controller of Patents to direct the other co-owner(s) to act in accordance with the section (section 51(1)).
E.g. If co-owner “B” refuses to allow co-owner “A” to grant a license in the favour of a third party, co-owner “A” can make an application to the Controller to allow the license to be granted.
The Controller shall give the co-owners the opportunity to be heard before giving any directions (section 51(3)).
Read this article on rights of co-owners in other countries such as U.K., Australia and Japan.
Detailed discussion of Indian position available here.
Image from here.
 Also known as “joint owners.”
 As was held in Willingham, “The nature of a patent is such that co-owners are at the mercy of each other.”