- Ownership requires a high degree of certainty. Do not assume ownership.
- Determine ownership using a chain of rights analysis.
- Chain of rights analysis requires working forward from each inventor to the acquirer’s rights or interest.
- At each link obtain and analyze the document that provides for the transfer of rights. Ownership determination is a two-part process: (1) identifying all inventors and (2) determining that each inventor has transferred rights in the invention.
(1) Identify all inventors
- Invention disclosure memos
- Inventor publications
- Discussion with inventors
(2) Have all inventors transferred rights?
- Need executed assignment or license
- Bad practice to rely only on employment agreements to effectuate transfer
- Check recording with USPTO and foreign authorities
- Check USPTO and foreign authority files for claims of ownership by others
(3) Was invention made under a government grant and/or SRA?
- Locate grants and SRAs that cover inventions during relevant time period
- Was title taken under Bayh-Dole Act?
- Document timely election of title
- Are there NIH regulatory issues (i.e., regulations on licensing research tools)
- Analyze possibility of march-in rights
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