This document summarizes a presentation on identifying and transferring intellectual property (IP) ownership. It covers original ownership of patents, trademarks, copyrights and "inventor's rights," as well as how ownership can be transferred through assignment, licensing, inheritance, or bankruptcy. It also discusses issues like joint ownership, recording transfers, securing rights, enforcing rights, and ownership of future yet-to-be-created IP rights. The presentation aims to provide an introduction to IP rights and ownership as well as tips for rights-transfer contracts and tracking details of potential IP.

1. IP Transactions: Identifying & Transferring Ownership April 6, 2011 Elizabeth Herbst Schierman US Patent Attorney schierman@dykaslaw.com CLE Presentation Sponsored by the Intellectual Property Law Section of the Idaho State Bar

2. Topics Covered Intro to IP Rights The bundle of rights for Patent, Trademark, & Copyright Original Ownership Determining ownership at creation Transferring Ownership Assignment vs. License Common IP Ownership Concerns

3. Disclaimers Law addressed is U.S. Patent/Trademark/Copyright Law Trademark law discussed is focused on federal law Focusing on registration Consult a Estate/Bankruptcy/Tax Attorney

4. Intro to IP Rights Copyright Rights: Reproduction Adaptation to create derivative works Distribution of copies by sale, rental, lease, lending Performance / Display Moral Rights (for Visual Art) Attribution Integrity

5. Intro to IP Rights Creation: Original work of authorship fixed in tangible form Term (for work created Jan. 1, 1978, or later): Generally: Life of last surviving author + 70 years (Dec. 31st) Work Made for Hire: Earlier of 120 years after creation & 95 years after publication (Dec. 31st)

6. Intro to IP Rights Rights: Right to exclude, within the area**, junior users from adopting/using marks likely to cause confusion **Area for federally-registered mark = Nationwide **Area for state-registered mark = Statewide **Area for common law mark = “Geographic” area in which mark used

7. Intro to IP Rights Creation: Use in commerce Must be distinctive, i.e., capable of distinguishing the goods/services upon which it is used from good/services of others Term: Common Law: Until earlier of abandonment or loss of distinctiveness Federal Registration: 10 Years, renewable in 10-year increments with declaration of use

8. Intro to IP Rights “Inventor’s Rights” a.k.a. prospective patent rights Ability to: File application for patent Transfer right, title, & interest Does NOTinclude right to exclude others from practicing invention

9. Intro to IP Rights Creation: Invention = Conception + Reduction to Practice Term: Until earliest of Abandonment Passage of statutory bar to patentability Transfer of rights Issuance of patent

10. Intro to IP Rights Patent Rights: Exclude others from Making, Using, Selling, Offering for sale, and Importing the Claimedinvention in the United States

11. Intro to IP Rights Creation: Issuance of Patent Term: Utility Patent: 20 Years from first filing date, if maintenance fees paid Design Patent: 14 Years from issuance

12. Original Ownership Original Owner(s) of Copyright Generally: Author(s) is/are Owner(s) Author(s) = Creator(s) of the original expression in the work Work Made for Hire = Employer is Owner (1) Prepared by employee w/i scope of employment; or (2) Express written agreement & w/i specific categories of work

13. Original Ownership Original Owner of Trademark The source of associated goods/services Individual Business

14. Original Ownership Original Owner(s) of “Inventor’s Rights” Individual(s)who conceived of the invention Depends upon claims in application/patent

15. Original Ownership Original Owner(s) of Patent Rights Holder(s) of right, title, and interest in invention/patent application at time of issuance of patent May or may not be indicated on face of patent

16. Transferring Ownership Assignment Transfer of ownership (right to exclude) License Waiver of right to sue Inheritance Bequeathal in will Intestate succession Operation of Law Bankruptcy

17. Transferring Ownership Transferrable in whole or in part by Assignment/Grant ** License** Operation of Law Inheritance Bequeathal Intestate Succession ** Subject to Termination – 17 USC § 203

18. Transferring Ownership Rights NOT Transferrable Moral Rights May be waived, expressly, in writing Copyright transfer termination right Cannot be waived Cannot be contracted away

19. Transferring Ownership Assignment - Only with good will Fed. TM App or Reg.: in writing, duly executed License TM Owner must exercise quality control or the license may constitute forfeiture of rights Inheritance – with good will Bankruptcy – Treated differently than other IP

20. Transferring Ownership Rights NOT Transferrable Trademark rights without good will Intent-To-Use Federal TM Application: Not assignable, except to successor business

21. Transferring Ownership Assignment: Gives assignee Power to take action / Prosecute application (with other rights holders) Right to have issuing patent issued to it Must be in writing Must include assignor’s entire ownership interest or a percentage thereof Bundle of rights must stick together!

22. Transferring Ownership License: Licensee may receive ??? Assurance of license to hoped-for patent rights Know-how May be limited as to time, geographical, area, field of use, etc.

23. Transferring Ownership Inheritable, to an extent: Legal representatives of deceased or incapacitated inventor may make application for patent Executor or Administrator (But Intestate – Heirs of Inventor) Bankruptcy – At least “patent pending” Pre-Filing: ? (consult a bankruptcy att’y)

25. Inheritance

27. Common Issue 1: - Joint Ownership Joint Authors Co-Owners / Tenants-In-Common Each has independent right to exercise or license copyright rights Must account to co-owners for profit earned from licensing or use

28. Common Issue 1: - Joint Ownership Joint Owners of Trademark Rare and risky! Co-owners with structure to assure joint quality control of goods/services No right to exploit mark or transfer rights (assign or license) without consent of joint owner(s)

29. Common Issue 1: - Joint Ownership Better alternatives (maybe): Jointly-operated entity owns trademark One entity owns, licenses to other entity Related Joint Users: Mark used by related companies inures to benefit of Registrant or Applicant for registration

30. Common Issue 1: - Joint Ownership Co-inventors: All who contributed to conception Requires: Some quantum of collaboration or connection b/w inventors Not a co-inventor: One who suggests result to accomplish, but not means to accomplish result

31. Common Issue 1: - Joint Ownership Any & all co-inventors must be identified in application Unavailable Joint Inventor: All available joint inventors can file if joint inventor Cannot be found or reached after diligent effort; or Refuses to join in an application

32. Common Issue 1: - Joint Ownership Joint Patent Holders: Inventor(s) not having assigned rights Assignee(s) In absence of agreement to the contrary, each joint owner of patent may Exercise patent rights, Without consent of, and Without account to co-owners

33. Common Issue 2: - Recording Transfer Recordable in the Copyright Office: Transfer of copyright ownership Other document pertaining to copyright Requirements: Actual signature of executor or sworn/official certification of true copy Fee Constructive notice

34. Common Issue 2: - Recording Transfer Original applicant presumed to be owner of TM App or Reg unless there is an assignment Recordable in the US Pat & TM Office: Assignments Other document affecting title (licenses, security interests, etc.) Assignment void against subsequent good faith purchaser, unless assignment recorded

35. Common Issue 2: - Recording Transfer Inventor(s) presumed to be owner of application and resulting patent unless there is an assignment Recordable in the US Pat & TM Office: Assignment Other document affecting title (licenses, security interests, etc.)

36. Common Issue 2: - Recording Transfer Recording necessary for Assignee to take action Assignee to be issued patent Assignment void against subsequent good faith purchaser, unless recorded

37. Common Issue 2: - Recording Transfer Child Apps w/ No New Material Types: Continuation Divisional Nonprovisional from provisional Assignment need not be re-recorded Re-recording needed for USPTO’s records to reflect the assignment

38. Common Issue 2: - Recording Transfer Child Apps w/ New Material Types: Continuation-in-Part Nonprovisional from provisional New assignment needed for execution and recording

39. Common Issue 3: - Securing Rights Standing to File Application: Owner of copyright or any exclusive right in the work, i.e., Author Copyright claimant Owner of exclusive right(s) Duly authorized agent of such author, other copyright claimant, or owner of exclusive rights

40. Common Issue 3: - Securing Rights 1(a) Application – In Use Owner of trademark used in commerce 1(b) Application – Intent-to-Use Person with bona fide intention to use trademark in commerce

41. Common Issue 3: - Securing Rights Inventor(s) is/are initial applicant(s) Assignee may be identified at filing All owners must act together Licensee does not have power to take action

42. Common Issue 3: - Securing Rights Duty of Candor: All involved in filing or prosecution Must disclose info material to patentability Small Entity Status For-profit: No more than 500 employees Nonprofit: Depends on type No rights, existing or promised, to non-small entity

43. Common Issue 4: - Enforcing Rights Prerequisite to Bringing Suit: Registration or Preregistration (Works Originating in the US) Standing to Sue: Legal or beneficial owner of exclusive right Other person having/claiming interest: May be Joined Shall be allowed to Intervene

44. Common Issue 4: - Enforcing Rights Standing to Sue – Lanham Act Sect. 43(a)(1) “[a]ny person who believes that he or she is likely to be damaged” Trademark Owner(s) / Assignee(s) Licensee(s), exclusive and non-exclusive (Depending on terms of license) Evidence of reasonable likelihood of suffered competitive or commercial injury

45. Common Issue 4: - Enforcing Rights Standing to Sue – Lanham Act Sect. 32(1) “registrant” Registrant Exclusive licensee with rights tantamount to assignment (depending on court) Notnon-exclusive licensee

46. Common Issue 4: - Enforcing Rights Prerequisite to Bringing Suit: Issued Patent!!! Standing to Sue: Definitely: (All) Owner(s) Patent Owner(s) Exclusive licensee w/ “all substantial rights” Possibly: Exclusive licensee w/ < “all substantial rights” No standing: Non-exclusive licensee

47. Common Issue 5: - Not-Yet-Created Rights Original ownership of future rights indeterminable prior to creation “agreement to assign” or “will be assigned” Vests only equitable rights in IP Does not vest legal title “Hereby assigns and agrees to assign all right, title, and interest . . . “ Should prevent future original owner from otherwise transferring rights

48. Take-Away Tips Rights-Transfer Contracts: Investigate original ownership & Conduct title search Clarify rights &limitations Ownership of modifications Responsibility for securing rights Standing to enforce rights

50. QUESTIONS ? Elizabeth Herbst Schierman US Patent Attorney Boise, Idaho www.linkedin.com/in/EHSchierman