Legal Question in Business Law in New York

Re: Rights of 2 Inventors in regards to Patent Royalties

The answer to your question is yes, you need an agreement between the two inventors. I suspect, however, that you are underestimating the complexity of such an agreement.

Your question omits some very pertinent facts such as why the company is being dissolved, what rights the company has to the patent, what the agreement between the 2 inventors prior to the dissolution had been with respect to this invention, etc. Each of these facts will have an impact on how the agreement should be drafted and whether it makes sense for each of the two inventors to enter into it. Each inventor would typically want assurances that the other inventor is not aware of some great opportunity out there that he/she is planning on capitalizing on as soon as the profits no longer have to be split.

In addition, such an agreement should cover many issues, such as (1) how future infringement claims against the patent would be handled and who would be responsible for the costs associated with such claims, (2) the extent to which one inventor may compete for the same sales with the other and (3) the extent to which one inventor could sell future products derived from or based on the same or a similar idea if the other person was the one who conceived of those products. There are many more similar issues.

The situation you describe is typically quite complex, and you should each seek independent legal advice in connection with this matter. I would be happy to discuss this matter with you if you decide to obtain legal advice.

Best of Luck.

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WARNING: This information is not intended to constitute legal advice and should not be relied upon for any purpose in lieu of consultation with appropriate legal counsel in your own jurisdiction.

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