Re: jointly owned IP Herbert B. Chermside 05 Dec 2001 11:08 EST
If it is truly jointly owned, each party has complete right to do with it
what they wish. But check carefully the terms of ownership, as there may
be strings attached.
Here's the hooker: I own invention X jointly with you. I license it
exclusively to ABC Co. You license it exclusively to HJK Co. Each of us
has acted legally -- but ABC and HJK are at one another's throats, and only
the lawyers are getting rich. Each of ABC and HJK failed in their due
diligence; each should in one way or another have found that the ownership
was joint and made arrangements that the other owner also transferred
exclusive rights to it only. Lesson herein: If you license in, include a
warranty that the licensor has right to license exclusively and that no
other party has rights to license the same IP.
In your case, the rights to the IP of the bankrupt company are part of its
assets -- at least if it really had joint ownership with no provisions that
their rights devolved on the other joint owner in case of bankruptcy -- so
the trustee/conservator should not be ignored.
At 08:37 AM 12/5/01 -0500, you wrote:
>What is the disposition of a jointly owned IP with a small high tech
>company which went belly-up? This faculty would like to use the jointly
>owned IP in a proposal to Fed.
>Thank you in advance for your assistance.
Herbert B. Chermside, CRA
Director, Sponsored Programs Administration
Virginia Commonwealth University
PO BOX 980568
Richmond, VA 23298-0568
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