Is Inventors (and heirs) right to sublicense necessary?

[tarul]

Relating to section 4 - While it may feel good for inventors to be able to sublicense, is this actually necessary? And more so, does it create potential legal problems for the Inventors and heirs?

Here's one possible scenario: Company A uses the IPA and many years later sues Company B. Company B finds the Inventor, requests and receives a sublicense, then claims it now has a license. Company A continues suit and now sues Inventor for granting a sublicense that they didn't have the right to grant because unbeknownst to Inventor, Company B had sued a supplier of Company A on another issue so Company A was suing for a Defensive Purpose. Add a layer of complexity if there is a question if the "Defensive Purpose" test was really met. And another layer of complexity if Inventor's heir is the one doing the assigning and has no idea what the patent is, what it relates to, or even what they were doing after being sweet talked by Company B's lawyers.

Two comments:

1. What if we modified section 2 to nullify the assignment if patent is used for other than a Defensive Purpose? So the company not only agrees not to sue, but the patent reverts back to the Inventor or maybe is in public domain (i.e. it is no longer assigned to the company) if the Company sues except for Defensive Purpose. That allows Company B to challenge Company A's suit on the grounds that the patent assignment is no longer valid due to Company A's actions. And both of their lawyers (and a court) will figure it out without involving the Inventor or worse, an heir, who may now want their own legal counsel and have to pay for it themselves since their interests are no longer concurrent with Company A or Company B.

2. Separate from Inventor sublicensing, is the heir clause necessary? For practical purposes with the software patents we are talking about, by the time most inventors die, the patent will have expired (I appreciate that in the case of an untimely death that is not true). Further, having the onus of tracking down an heir is difficult or impossible if the estate isn't settled in probate, the heir might not even know they inherited this right, and that heir is now put in a position that they probably don't want to be in. So are Inventors gaining anything from this? The alternative is to allow the assignment right to lapse with the Inventor's death. Given that many patents now have multiple Inventors, in practice that means the surviving Inventors can still sublicense it. If item 1 makes sense, then the entire section 4 becomes unnecessary.

I'll make a fork and edit if this seems like a good approach.

[benltwitter]

On your scenario: I'm not understanding what the basis for the lawsuit by Company A against the inventor. The inventor is fully empowered to grant the sublicense. It's just that the sublicense does not protect Company B if it turns out that the suit was defensive.

The heir issue is a good point, and I am wondering if the better way to deal with the issue is to allow the Inventor to appoint some kind of representative, with directions, much like a living will.

On the comments --

1. Had considered an approach like this. Was worried that the definition of Defensive Purpose might get twisted in a way to create inadvertent loss of rights. And once the reversion happens, there is nothing to stop the inventor from being coerced or bribed into doing the wrong thing. The agreement needs to hold the inventor as well as the assignee accountable, which can't happen if there is a full reversion. Committing to the public domain is a possibility, but then the inadvertent loss of rights issue becomes even more serious if there are defects in the Defensive Purpose definition.

2. Good question. I had an inventor on a patent application once die in a motorcycle accident at the age of 30. It's rare but not impossible. I'm not convinced that the heir thing is the way to do this.

And I would love to see a fork that tries a different approach to the larger issue.

[tarul]

The inventors only have the right to sublicense to enforce the Company's obligation to use patents defensively. So in this scenario, it would seem that Company A has to invalidate the sublicense and it would have to involve the sublicensor (Inventor) in a separate proceeding to do that.

I like your suggestions on the heir issue, that sounds like a better approach than having some unwitting person who inherited all or the remainder of an estate to have this right (and potential obligation).

Back to the original comments:

1. If there is any issue with "Defensive Purpose" then a court is going to have to decide it at some point. Everything else will flow from that decision. My goal is not to involve the Inventor (primarily in the case they left the Company) as a party to the litigation such that they would require counsel. Your point on coercion is a valid concern so maybe making the patent public domain is the solution. IMO, what Inventors want is to do great work and not be hindered vs. trying to collect money or rights for "inventions"

2. I think your comment re: directives is the way to handle this. Its a definite outlier - an untimely death with no co-inventors but if we make the change in Section 2(a) unnecessarily uses term "intellectual property" #1, there is no need to have the Inventor enforce the Company's promise, the courts and compettitors would do so.

Very slowly working on the fork! Was tied up with other things, stay tuned :)

[tarul]

Sorry for the delay in proposing new language, still learning how to use GitHub! Looks like instead of attaching code here, I made a new issue... but there are line comments in the Diff.