Property, intangible

a blog about ownership of intellectual property rights and its licensing

News Flash: Patents Can Be Transferred by Operation of Law

The patent blogs are reporting on a new decision by the Federal Circuit, affirming that transfer of ownership of a patent can occur not only by assignment and through intestacy, but also by the operation of law when a holder of a security interest exercises its right to sell the collateral. Good thing, as the court pointed out:

The policy justifications for permitting transfers of patent ownership through operation of law without a writing also support our holding. First, if foreclosure on security interests secured by patent collateral could not transfer ownership to the secured creditor, a large number of patent titles presently subject to security interests may be invalidated. Any secured creditor who maintained an interest in patent collateral would be in danger of losing its rights in such collateral. Second, by restricting transfer of patent ownership only to assignments, the value of patents could significantly diminish because patent owners would be limited in their ability to use patents as collateral or pledged security. Lastly, it would be impractical to require secured parties to seek out written assignments following foreclosure from businesses that may have ceased to exist.

Patent Prospector here.

Patently-O here.
The 271 Patent Blog here.
Sky Technologies, LLC v. SAP AG, No. 2008-1606 (Fed. Cir. August 20, 2009).

© 2009 Pamela Chestek

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