Patent ownership may change by operation of law, including operation of foreign law

In a decision today, the Federal Circuit vacated a district court's dismissal of a case for lack of standing on the basis of insufficient evidence of patent ownership.  The inventor of the patent died intestate as the only owner of the patent.  While his two daughters executed transfers of ownership to the inventor's widow, the district court held that under 35 U.S.C. § 261, the executor of the estate had to first transfer the patent rights to the heirs, and without such a transfer, there was no standing to bring suit.

The Federal Circuit vacated, noting that while § 261 states that patents are assignable only in writing, previous decisions have held that state law controls the issue of patent ownership.  Further, ownership may transfer by operation of law, and when a patent owner dies, it is state probate law that determines to whom ownership passes.

The court held that this concept applied in this case, even though it would be Japanese law that would determine ownership rather than a state's law.  Because it was unclear from the record whether an administrator is required under Japanese law when a person dies intestate, the court remanded the case to make that determination, which would resolve the standing issue.

More detail of Akazawa v. Link New Tech. Int'l, Inc. after the jump.

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Second Circuit: retroactive assignment cannot cure past infringement claim by co-author

The Second Circuit yesterday issued a decision regarding whether an action for infringement brought by one co-author of a song can be defeated by the grant of a "retroactive" transfer of ownership to the infringer from a co-author who is not party to the infringement action. The case involved licensing and litigation regarding authorship of two tracks on Mary J. Blige's 2001 album, ironically named "No More Drama."

In this issue of first impression, the court held that the "retroactive" transfer of ownership does not defeat any infringement causes of action that had already accrued at the time that the transfer occurred.  This was because the retroactive assignment amounted to a transfer of rights that had already vested in the other co-authors, namely the right to sue for infringement.

More on Davis v. Blige after the jump.

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