What Happens If There Are Follow-On Patents To The Original Patent?

It depends on who owns the follow-on patents. Typically, Yale will have filed the initial patent application that is exclusively licensed; the exclusive licensee provides input for the prosecution of this original patent. Follow-on inventions conceived by the licensee without Yale involvement usually belong to the licensee. These patents must be filed by a different law firm than the original patent (to avoid the conflict of interest caused by the attorney representing both Yale and the licensee). Follow-on inventions based on work at Yale will be owned by Yale and the licensing of the new invention will be handled by OCR as if it were a new disclosure. In other words, the existing licensee will not be automatically granted a license to the follow-on invention.

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