All Owners Are Necessary To Bring Suit
Dr. Richard Chinn reports
It is important to secure assignment from all of the named inventors. In Advanced Video Tech v. HTC Corp., the Fed. Cir. affirmed the district courts' dismissal of the case based on the grounds that a co-owner of the patent was not a party and the co-owner's ownership interest was not transferred to the plaintiff. One of three co-inventors had not assigned her rights, even though her employment agreement included a "will assign" provision, a trust provision and a quitclaim provision. The "will assign" provision was viewed as only a promise to assign while the trust provision was inconsistent with an interpretation of the employment agreement resulting in immediate assignment.