Another Partner Problem!

[MCD3929]

What is the name of your state? Oklahoma
My partner and I have two patents that we share ownership with. They were put in our personal names and not in the companies. The agreement states that I am co-inventor and I will recieve 25% of the net profit. He will receive 75%. That is all that was stated, nothing about ownership of the patents or any debt's that would occur. I went along with this because I thought a company would buy the patents and it would be short termed. Three years later the company is starting to really grow and we need more funding which I found but cannot come to a agreement with my patner. I built this company and handle all of the transations. I need to know what my rights are as a patent co-owner.
1) Can I continue to sell the products without my partner.
2) Can I continue to sell the products under the products name.
3) Will I have to pay him royalties if I can sell the products.
4) We never filed for a trademark but have been using tm after the product. name would this help me aquire the product name for my company.
Please advise me if I have missed anything that could prevent me from continuing on my own.

 

[divgradcurl]

I am going to assume that both of the patents issued have both of your names as inventors, and they have not been assigned to anyone. In that case:

1. Yes. But remember, he is also free to practice the patent without YOUR permission, including licensing the patent to another party without your permission. He can't sell or license your interest, though, and you can't sell or license his.

2. This will depend on who owns the trademark rights. I know you said that you have not registered a trademark, but you may still have acquired common-law or state trademark rights. This "goodwill" is most likely owned by your partnership. If you are going to dissolve your partnership, figuring out how to partition the "goodwill" should be part of the dissolution discussions.

3. Yes. You will have to split the net profits of any sale with him 50-50. He will have to do the same for you if he sells any products.

4. Yes, but, as I mentioned above, there may already be rights associated with the name that you'll have to figure out.

 

[MCD3929]

partner problem

State is Oklahoma. If he license's the product does he have to split the net profit with me also. And how many companies license half a patent? I have also applied for a trademark from the state of Oklahoma and I am going to apply for a US trademark.

 

[divgradcurl]

If he license's the product does he have to split the net profit with me also.

Yes.

And how many companies license half a patent?

If the license is an exclusive license, probably none. If ti is a non-exclusive license, then I suppose it's really no different than any other non-exclusive license. When a patent has more than one owner, each owner has an undivided share of the patent -- it doesn't matter how much each inventor contributes. So, in your case with 2 inventors, each of you owns half of the patent. But it's not like one of you owns claims 1-20 and the other 21-40 or anything; each of your halves entitles you to practice the whole patent.

So, to answer your question, obviously someone interested in an exclusive license will want to ensure that he or she has negotiated with both of you -- if he or she only negotiates with one, then the license isn't really exclusive because YOU could still do what you wanted with your half.

But, if the license is non-exclusive anyway, then dealing with one or the other is sufficient.

Note that any and all of this is moot if you have a contract between the two of you that specifies differently. But in the absence of such an agreement, this is how it will work.