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Outlines of Patent co-Ownership

13 February 1998

This subject-matter is ruled by Art. 20 (Invention Law) and by the Articles regarding joint ownership, that is Articles 1100 and following (Civil Code), but it does not find uniform interpretation either in jurisprudence or in doctrine.
Article 20 (Invention Law) states that in case of more than one applicant of a patent, there is the application of the provisions of the Civil Code regarding joint ownership, unless the applicants of the patent have already reached a private agreement between them.

Intangible property (such as a patent, a utility model, a design or a trade mark), is not well regulated by these dispositions, this because intangible property entails problems different from those of a piece of land, a flat or a street. When a patent is owned by more than one applicant, regardless of the existance of equal shares in this joint ownership (this is the case when situations of out and out standstill may materialise), the major problems that may stem therefrom involve:

  • Care-taking;
  • Acts beyond care-taking;
  • Sale and presence of real rights on a patent
  • Licence agreements on a patent

It is common that the interests of one party of the ownership do not correspond to those of the other parties.
For the purpose of explanation only, we wish to consider the case when a party intends to license out his patent to a third party, who may be a competitor of one of the co-owners. Another example could be the case when a co-owner uses the patent for activities that compete with those of another co-owner. Most times, when the interests of the patent co-owners clash, either the rights deriving form the grant of a patent are lost or the co-owners turn to Judicial Authority.

From the above, although outlined concisely and partially, we think that prospective co-owners will understand that they should regulate their judicial position by means of a written agreement between the parties, this before a patent application is filed.
Such an agreement is necessary to better define their positions and functions, this with a view to avoid as far as possible unpleasant misunderstandings which are doomed to end up in economic prejudice.

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