How to Invent and Protect Your Invention: A Guide to Patents for Scientists and Engineers

10.1 SELLING, LICENSING AND ASSIGNING PATENTS

A patent is like any other form of property in that its ownership can be sold, licensed, or given to another person. Co-owners have equal power in regard to patent rights, meaning that they have identical rights to exclude other non-owners from making, using, selling, or importing the invention. Furthermore, a co-owner can license the invention to a third party without the consent of the other owners. However, all co-owners must join together to grant an exclusive license, because allowing a single co-owner to exclusively license the invention would infringe upon the rights of the other owners.

Patents can, and often are, sold to individuals or entities that intend to commercialize them. Patents can also be assigned to a company or person, meaning that the inventor gives away his rights in the patent even before the patent is granted. Many companies include an assignment clause in their employment contracts, which automatically assigns all inventions an employee makes within the scope of her work to the company. Finally, a patent owner can license her patent to an individual or company, meaning that the owner can enter a contract that gives another person (the licensee) the right to make, use, sell, or import the patented invention. A license agreement need not give the licensee the right to do everything the patent holder can do. For example, a license agreement can give the licensee the right to use the invention, but not to make, ...