The joint ownership of intellectual property in general and of invention in particular in Vietnam or other country can arise in two different ways: (i) An agreement may provide that patent will be owned jointly by the parties, regardless of whether they were joint authors, joint inventors or joint creators and (ii) The parties may contribute jointly to the creation of the invention and so are joint authors, joint inventors or joint creators.
If joint ownership of patent is to be agreed, generally, the agreement will address the following 3 issues, namely, (i) whether a joint owner can or can not exploit the co-owned patent (only with or without the need for, the other joint owner’s consent or only with the obligation, and/or without the obligation, to pay royalties (or other fees); (ii) whether a co-owner grant a licence to another person (only with, or without the need for, the other joint owner’s consent and/or only with the obligation, or without the obligation, to share the royalties (or other fees) received from the licensee); and (iii) Whether a co-owner assign its share of the co-owned patent to another person only with, or without the need for, the other joint owner’s consent.
The other matter that an agreement should specifically address is the ownership proportions held by the joint owners. If the parties do not specify a joint ownership proportion, it will be presumed that they are equal joint owners. However, joint owners do not always seek to be equal joint owners. Sometimes, one party may make a larger contribution than the other (in money, resources, or an innovative contribution), which may justify an unequal ownership proportion. In that case, it will be important to specify what the joint ownership proportion will be, or how it is to be determined to avoid internal disputes and easy calculation of royalties/license fee if the patent is licensed to a third party. Thus, unless the joint owners of a patent agree otherwise, it is generally construed that co-owners have equal shares in the patent and can exploit it for their own benefit without accounting to each other. Many co-owners face dilemma in exploitation of the co-owned patent, especially when licensing other party to use the co-owned patent. The lesson is that it is not desirable to be silent on these issues of exploitation, assignment and licensing, but rather, to specifically address them, and for a joint ownership agreement to regulate in an agreed manner the respective rights of the joint owners before proceeding with patent registration in Vietnam.
