Legal Question in Intellectual Property in North Carolina

My husband and I have several patents. I am listed as a co inventor. He wants to take me off the patents and put me on as a joint owner. If we get divorced will I still have rights to the royalties? Our products are sold world wide. We have had the patents for approx 8 ys with me listed as co-inventor now all of a sudden he wants me off and put on as co-owner? I don't know if I should do it?? He did original drawings and I helped with changes and a sister patent. He said since he did all original drawings he is the only inventor and Im just a owner. Would this take my portion of royalties away from me??


Asked on 11/03/09, 6:50 pm

1 Answer from Attorneys

Sarah Grosse Sarah Grosse, Esquire

All inventors must be named in a patent application, regardless of who will later own the patent rights. Here, you did not say who actually INVENTED the patented invention -- preparing the patent drawings has nothing to do with contributing as an inventor. One does not change inventorship after the patent application is filed unless a mistake was made as to the true inventors which needs to be corrected (in good faith with no intentional fraud on the Patent Office(USPTO)).

After all inventors apply for a patent application -- and they MUST -- the application (and later granted patent) can be assigned to anyone. If no assignee, each of the inventors owns the invention. If the patent is assigned, the USPTO records the assignment (change of ownership) and the proportion of ownership which each assignee (owner) has. The proportion which each assignee owns is dictated by a contract between the parties. The royalties to which each assignee is entitled are also dictated by a contract between the parties - not by the USPTO or some other way. If you all established a corporation to sell these products worldwide -- and you SHOULD -- the corporation should be the assignee of the patents, and you as individuals should have a royalty contract with the corporation.

If you really don't understand any of this -- and it is clear that you do NOT -- you need to retain a Patent Attorney to explain it, to prepare a contract between you and the co-inventor(s)/corporation, and prepare the assignments as needed. I think you also need to discuss this with a Patent Attorney under the protection of the attorney-client privilege because you may have an issue of fraud on the USPTO when the application was filed, which could invalidate the patent entirely.

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Answered on 11/08/09, 11:13 pm


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