Acknowledging Juneteenth

While there were certainly inventors who were slaves, the patent system was unavailable to them. In an interesting case from 1857, a slave named Ned invented a “double plow and scraper,” which enabled a farmer to plow and scrape both sides of a row of cotton simultaneously. Ned was “owned” by Oscar J.E. Stuart, a lawyer and planter from Mississippi. Stuart tried to patent the invention first in Ned’s name and then in his own, but was denied by the Commissioner of Patents because Ned, as a slave, could not execute the required oath, and neither could Stuart, because he was not the inventor. Stuart, apparently having no sense or irony, complained that it would violate “equal protection” if slave owners could not patent the inventions of their slaves. Read more about this in Frye, Invention of a Slave, 68 Syracuse Law Review 181 (2018)

According to the Report of the Commissioner of Patents for the Year 1857, the invention of a slave could not be patented because a slave inventor could not take the patent oath, and in any event could not receive, own, or transfer a property right. This latter point was actually consistent with the laws in some states (e.g., Louisiana) that prohibited slaves from owner property, even if they could obtain it.

The Confederate States patent laws express permitted the owner to apply to patent the invention of slave, although it is not clear whether any slave owner took advantage of this during the short tenure of the Confederate States Patent Office. This provision may have been initiated by Confederate President’s Jefferson Davis, who, with his older brother Joseph Emory Davis, previously unsuccessfully attempted to get a U.S. patent on an improved propeller invented by Benjamin Thornton Montgomery, then a slave owned by Joseph.

155 years ago today, on June 19th, 1865, Major General Gordon Granger, landed at Galveston, Texas, and with his General Order 3, completed the elimination of slavery in the United States begun by Republican President Abraham Lincoln’s September 22, 1862, Emancipation Proclamation. The inability to get a patent seems trivial in comparison with the injustice of slavery; but this embarrassment of the patent system ended 155 years today.

It’s Not Always Nice to Share

Joint ownership of a patent creates complications for the joint owners. Pursuant to 35 USC 262 “each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.” This means that each of the joint owners can use the patent or license the patent to someone else, and not have to ask the other joint owners, and not have to share any of the proceed with the other joint owners. A consequence of this statute is that the particular percentage of ownership is irrelevant: the joint owner of 1% of a patent has the same rights as the joint owner of 99% of the patent.

A second problem with joint ownership is splitting the costs of obtaining and maintaining the patent. If one or more of the joint owners doesn’t want to contribute to the costs, the remaining co-owners have to pick up the slack. Even if everyone pays their fair share, what happens if there is disagreement over strategy.

Finally, when it comes time to enforce the patent, the Court of Appeals for the Federal Circuit requires that all of the joint owners participate in the law suit. Moreover the Federal Circuit has indicated that you cannot force joint owners to join a suit.

There are at least two solutions to the problems of shared patent ownership. The first solution is to eliminate shared ownership by forming a entity, such as a limited liability company, to hold all of the patent rights. This allows all of the problems of joint ownership to be resolved by the operating agreement of the entity.

The second solution is to have the joint owners sign an agreement that they will share the costs and benefits of the patent. This solves the problems of joint ownership though a negotiated agreement. Key provisions of such an agreement include:

  • A mechanism for making decisions about prosecution of the patent.
  • A mechanism for making decisions about enforcement of the patent.
  • An apportionment of costs of obtaining, maintaining, licensing, and enforcing patents.
  • A mechanism for addressing joint owners who do not pay their share of costs.
  • An apportionment of revenue from using, licensing, and enforcing the patent.
  • A duty to join in infringement actions.