Patents Can be Transferred by Operation of Law, Without an Assignment

Akira v. Link New Technology International, Inc., [2007-1184] (March 31, 2008) [ARCHER, Newman, Linn] The Federal Circuit vacated summary judgment because issues of Japanese intestacy law must be resolved by the district court in order to determine ownership of U.S. Patent No. 5,615,716, and remanded for further proceedings.
SIGNIFICANCE: Patents can be transferred by operation of local law, and local law determines whether they were in fact transferred.
BRIEF: LOF: Whether a party has standing to sue is a question of law reviewed. The Federal Circuit noted that patent ownership may be transferred by assignment, and section 261 addresses such a transfer—requiring assignments to be in writing. However, there is nothing that limits assignment as the only means for transferring patent ownership. Indeed, the case law illustrates that ownership of a patent may be changed by operation of law. The Federal Circuit found that the district court erroneously assumed that intestate succession is an “assignment”. The Federal Circuit said that its case law is clear that state law, not federal law, typically governs patent ownership, and that it has looked to state law when determining ownership of the patent following a patent owner’s death. The Federal Circuit said that applying this principle to the present case would require looking to foreign law, as opposed to state law, to determine ownership of the ‘716 patent—because Yasumasa was a resident of Japan at the time of his death. The Federal Circuit remanded the case for determination of issues of Japanese intestacy law by the district court.