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
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)