Patents Lawyers

A Dispute Over Who Owns a Patent

Patent ownership disputes turn on two distinct questions that are frequently conflated: who **invented** it, and who **owns** it. Inventorship is a factual question about who conceived the claimed subject matter, and naming it wrongly can render a patent vulnerable. Ownership follows from employment, contract or assignment, and can sit with someone who is not an inventor at all.

A Patent Licensing or Royalty Dispute

Most patent licensing disputes are contract disputes, decided by the agreement rather than by patent law. The recurring flashpoints are the royalty base and how it is calculated, whether a product falls within the licensed claims, audit rights, sublicensing, and what happens if the patent is later invalidated. The audit clause is usually the most underused provision in the agreement.

Someone Is Infringing Your Patent

Before acting, two things need establishing: that the product actually falls within the scope of your claims, and that your patent would survive a validity challenge. Almost every infringement action draws a counterattack on validity, so an unprepared assertion can end with your own patent narrowed or revoked. Patent enforcement is also jurisdictional - a Canadian patent gives no rights in the United States.

You Have Been Accused of Patent Infringement

Do not stop selling, and do not reply on the merits, until someone has read the claims. A patent assertion is not a finding, and the two questions that decide it are technical: does your product actually fall within the wording of their claims, and would the patent survive a validity challenge. Both are answerable, and a meaningful share of assertions fail on one or the other. What you must not do is ignore it - continuing after notice can affect what a court later awards.

Your Patent Application Was Rejected

An office action is not a final refusal, and receiving one is normal rather than exceptional - most applications draw at least one. What matters is the deadline: response periods are strict, and an unanswered office action leads to abandonment, after which reinstatement is limited and the filing date that established your priority may be lost. Read the examiner's grounds, then decide whether to argue, amend or refile.

Your Patent Has Lapsed or Is About to Expire

Patents lapse for one reason more than any other: a missed maintenance fee. Reinstatement is often possible within a defined window, but it usually requires showing the failure was unintentional or that due care was taken, and third parties who began using the invention during the lapse may acquire protected intervening rights. Expiry at the end of term is different - protection simply ends, and nothing revives it.