Divorces and Patents – the problem of the Ex-Spouse

Many companies have standard patent assignment agreements that assign employee inventions to the employer.  But what if the inventor is married?  Or, what if the inventor marries during his or her employment and the invention is created during the marriage?  The spouse might have rights to the invention if he/she resides in a community property state.  Community property states include Arizona, California, Idaho, Louisiana, Nevada, New Mexico, Texas, Washington, and Wisconsin.

One recent story involving telecommunications giant Sprint played out in an interesting way:  Sprint obtained any interest that the inventor’s ex-wife had in a patent being enforced against it in an infringement action.  Sprint claimed that this would bar the claimant from enforcing the patent against Sprint because it would not have joined all owners of the patent in the lawsuit, something required to move forward in a case.

A similar claim was made in a patent infringement action against Taylor Made Inc.  After that filing, Taylor Made filed a motion to dismiss “arguing that the Plaintiff did not have standing because Ms. Taylor, a co-owner of the patent that was a marital asset subject to equitable distribution, had not been made a party to the infringement suit.

The take-away from these recent cases:  Spousal rights should be addressed in your company’s standard employee agreement.  This issue should also be part of your due diligence when acquiring a patent and before instituting patent infringement litigation.  Failure to do so can mean that ownership rights are shared with unfriendly ex-spouses looking for a chance to get even or make money.  The end result is a lack of standing and an inability to enforce the patent.  The patent is then worthless for all intents and purposes.