With regard to British patents, Section 36 of the Patents Act 1977 deals with the rights of co-owners. Subject to a contrary agreement, any co-owner has the right to exploit the patent himself, but must obtain the consent of the other owner: (a) to modify or revoke the patent; (b) licensing under the patent; or (c) to give up or mortgage its share of the patent. As more and more companies and organizations enter this type of joint venture for collaborative innovation, strategic alliance or any other form of collaboration agreement, common ownership of IP rights is commonplace. The most common form of IP attribution in collaborative innovation projects is a form of shared ownership, as shared ownership is seen as a “fair” solution in multi-party situations. Many businessmen, and even experienced lawyers and practitioners, lack a thorough assessment of what common ownership actually means in practice, but they still accept it because “it seems right” or “it`s always been done that way.” In reality, common ownership of intellectual property is fraught with danger and is contrary to general perception, often unfair and, worse, generally unenforceable. A common IP ownership scenario may result from an agreement or inattention to ownership issues. A patent can, for example. B request the designation of several inventors, and in the absence of a job or other agreement on the property, each designated inventor is by default co-owner of the entire patent. A group of computer programmers can compose themselves to create a new application and end up as co-authors who, together, own the copyright to the combined software. Two companies working together on a new project could agree to share costs fairly and decide to allocate brand ownership and other IP rights arising from the collective effort, for reasons of fairness.
Intellectual property rights, which are in common, face challenges at every stage of the patent process and different business requirements result in different patent coverage requirements. The drafting, filing and follow-up of a patent thus becomes complicated and costly, and the end result may not be optimal for some parties or for all parties involved. The granting of a common patent license reduces the value for both owners if a license from both owners is available. There is no effective way to agree, not to prosecute or to assert. The transfer of joint intellectual property rights is also a challenge. The value is diluted because it is possible to transfer only the owner`s share, not the entire rights. Similarly, warranties generally require full ownership. When notifying patents essential for an interoperability standard, both owners must declare the same rules and commit to making the declaration effective. Where patent disputes are pending, most countries require that both owners be considered plaintiffs and have no common interest, the patent is in fact of no value. As far as corporate accounting is concerned, it can be difficult to include in the company`s balance sheet the correct financial assessment of intellectual property rights with shared property. When parties collaborate on creative projects or stimulation and development, complex questions arise about the ownership of the resulting intellectual property (IP).