Joint ownership can arise from joint inventorship, such as where two or more individuals directly or indirectly collaborate as inventors. This often times happens unwittingly, as the two inventors may not have worked on the development of the invention together or at the same time. Sometimes, the primary inventor does not realize that the other inventor’s contribution raises that individual to the level of inventor. This is because the inventors do not have to make the same type or amount of contribution and the inventors do not have to contribute to every claim in the patent application.
Ethicon was the exclusive licensee of the “sole” inventor of the patent and Ethicon sued U.S. Surgical for infringement. U.S. Surgical investigated and located a “missing” (ie. unnamed) joint inventor and then proceeded to negotiate a license from him. Ethicon challenged the validity of the license. The courts upheld the validity of the license because the “missing” inventor, as a joint inventor, was a joint owner of the entire patent. Ethicon v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998), cert. denied, 525 U.S. 923 (1998).
The cautionary tale here is that even a one percent contributor to a patent will be a joint owner of the entire patent. An owner of a patent who believes that he has exclusive control of the patent may be sadly mistaken and find himself suddenly competing with another company.
The key for the “sole” inventor is to make sure that all others (ie. employees, etc.) who may work on any aspect of the invention have valid employement agreements or valid joint venture agreements that contain the proper assignment clauses. These agreements must be entered into prior to any work by the employee or contractor.
For the purchaser of a patent, proper due diligence will be key to understanding where the potential risks may arise. Due diligence should include review of agreements with employees or contractors working on the development of the intellectual property. Drafting strong purchase agreements and transaction documents can help protect the purchaser. Effective guarantees, warranties, indemnification and assignment clauses can lessen the financial impact, if something unpleasant occurs following the purchase of the intellectual property.
The Nonprofit Association of Oregon
This association is a statewide network that provides resources to nonprofit organizations. They provide training, classes, and other resources.
Web Site: http://www.nonprofitoregon.org/
They also publish a great handbook titled The Oregon Nonprofit Corporation Handbook. This is highly recommended for all non-profit clients.
Print copies may be available at:
5100 SW Macadam Avenue, Suite 360
Portland, Oregon 97239
Please call to confirm pricing and that they have copies available.
Oregon Secretary of State
The forms for incorporating your nonprofit can be found at:
The Secretary of State also has a resource page for nonprofits:
State statutes give certain rights to minority and dissenting shareholders. Some of these rights can be enhanced or modified by the company’s corporate documents such as the bylaws or articles.
Dissenter’s rights in Oregon are covered in ORS 60.551 to 60.594. The statute gives a shareholder the right to dissent from and obtain the fair market value of the shareholder’s shares following certain corporate acts. These acts are: Consummation of a merger; consummation of a plan of share exchange; consummation of the sale of all or substantially all assets of the company; amendment of the articles that materially affects the rights of the dissenter; and conversion of the company to a non-corporate business entity.
If a proposed corporate action, which could create dissenters’ rights, is submitted to the vote of shareholders, the statutes gives very specific requirements for giving notice to shareholders.
If the action is taken without shareholder vote, the corporation again must give a statutory notice to the shareholders regarding their dissenters’ rights.
Generally, A shareholder entitled to dissenters’ rights is not entitled to challenge the corporate action unless the action is unlawful or fraudulent with respect to the shareholder or the corporation.
Besides Dissenters’ rights, there are other potential causes of action that shareholders and the corporation must be aware of. These include minority shareholder oppression and deadlock, breach of fiduciary duty, derivative actions, and others.
If you or your business have concerns regarding shareholder rights and current or potential disputes caused by an action of a company, please contact us to discuss your options and develop a plan for moving forward.
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In unique matters, a personal lawyer serves you by consulting with other attorneys who specialize in unique areas of the law. In very complicated cases, a personal lawyer may retain other attorneys to work on a portion of your case and the personal lawyer serves as a legal manager for you to make certain the work is done efficiently and economically.
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