Property, intangible

a blog about ownership of intellectual property rights and its licensing

Who Owns the Patent?

Here’s the assignment history, you be the judge:

  • 1960: IBM Japan enters into a patent assignment agreement with IBM World Trade.
  • January 1, 1963: IBM acquires from IBM World Trade all patents IBM World Trade has or thereafter acquires.
  • June 25, 1981: amendment to 1960 agreement in between IBM Japan and IBM World Trade, stating that IBM Japan grants “to World Trade and/or its designees, in respect to inventions owned or controlled by IBM Japan, the right in countries other than Japan to file or have filed on its behalf or on behalf of such designees, and to own such applications for patents and the patents issuing thereon …”
  • December, 1990: extension of the 1963 agreement, as amended, until December 31, 2000.
  • Sometime in 2000: Inventors assign ownership of patent (presumably Japanese application) to IBM Japan.
  • Feb. 10, 2004: Patent issues listing IBM USA as the assignee.
  • June, 2005: IBM USA assigned “all right, title and interest in and to” the patent in suit, “along with any and all damages for infringement of any of the assigned patents before, on and after” June 30, 2005, “and the sole right to sue therefor under the assigned patents” to AU Optronics.

AU Optronics sued for infringement of the patent. That’s all the information the case provides. Does AU Optronics have standing? Leave your thoughts in the comments. Answer revealed later.

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