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The Law of Joint Ownership of Patents: The Right to Impede an Infringement Suit

November 14, 2014

By JANE SONG & RYAN ENCHELMAYER

There are a number of potentially significant implications inherent to jointly owning a patent. Principal among these implications is the basic ability of a patent holder to enforce the patent against third-party infringers.

The U.S. Court of Appeals for the Federal Circuit’s opinion in STC.UNM v. Intel Corp. and its recent denial for rehearing en banc serves as a clear reminder that all joint owners are required to participate as parties to enforce a jointly-owned patent. It would therefore be prudent to consider a scenario where one joint owner may refuse to participate in an enforcement proceeding and to take the necessary steps to preserve the enforcement rights of the other joint owners.