Can a patent be split geographically? 4 Answers as of July 12, 2013

I have patent coverage in 9 euro, U.S and Canada. My father-in-law is co-owner. He does not want to be in business with me and has offered to give me US and then he gets Eruo/Canada. We initiated agreement with our patent attorney. My father in law wants a provision in agreement that essentially forces me to transfer anything we develop related to technology to turn this over to him so we do not make his Euro/Canada patent obsolete. I understand why but this completely hampers my ability to go out and license and/or sell to third party in US. So, it may be a smart thing to do in patent space but I do not believe it will be favorable on a business side for either party. Essentially, I would have to tell any third-party that we license or sell to, yeah, BTW, anything you develop based on this patent, when you are reducing to practice, has to be turned over to this Euro/Canada entity (father-in-law). My patent attorney is not able to give me convincing business argument that this is a wise thing to do...can you help?

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DANIEL NESBITT | Hasse & Nesbitt
If you intend to assign the ownership of the non-US patents to your father-in-law, then yes, you can. As long as the technology to be transferred is that which belongs only to you, I don't believe your licensees will be harmed. You cannot promise or be bound to transfer the future technology of future assignees without their consent, and forcing them to do so will hamper your opportunity to license or assign. What do you get in return from your father-in-law for transferring the technology?
Answer Applies to: Ohio
Replied: 4/5/2011
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
This is a contract, licensing, and assignment of patent rights issue and potentially a complex one.
Answer Applies to: California
Replied: 7/12/2013
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
I am not fully understanding exactly what he is asking for. Each country has its own patent system so there is already a geographic division. Is he asking you for a U.S. license to any improvements you make? Or a Europe and Canada license to any improvements you make? Who is responsible for filing improvement patents in the U.S. and who is responsible for filing improvement patents in Europe and Canada? If there aren't going to be any improvement patents, they all you have are copyright rights, trademark rights, and maybe some know-how. You could set up a cross license deal, which would be more fair than a one-way license. So you get a U.S. license to any improvement patents that he obtains in the U.S. and he gets European and Canadian licenses to any European and Canadian improvement patents that you obtain. Third party licensees are not necessarily obliged to license back any improvements they make in Europe or the U.S. unless you specify that they are.

I would say that whatever license you give, you should get something back. Doing something reciprocally is fair. You also have to consider what happens if you only file improvement patents in the U.S.then there is no European or Canadian rights to license to him. Same thing if he only obtains improvement patents in Canada and Europe.
Answer Applies to: Washington
Replied: 4/4/2011
Handal & Morofsky LLC
Handal & Morofsky LLC | Anthony H. Handal
If you are going to have separate territories, your father-in-law may not be much affected by being a little obsolete, as it is unlikely that US sales will substitute for European sales. So I would argue that he doesn't need this. Likewise, if you do something significant in the future, why shouldn't that carry some compensation in exchange for a license to your father-in-law? That would be a win-win. I do not see the scenario proposed by your father-in-law as a win-win, and suggest that if you hold out you will not have to give rights to future inventions. I think a little hard negotiation will get you what you want.
Answer Applies to: New York
Replied: 4/4/2011
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