The Trifecta Medical Patent Transfer: All Three Have To Match For A Win

Medical Patents Broker Inc.
By Kenneth Pearce, President

Here is a familiar scenario. Three brilliant parties—such as a neurosurgeon, a biomechanical engineer, and a university—are joint owners of a Class II device. There is a buyer who seems interested, and the owners feel like they have hit the trifecta. But suddenly, the jockey pulls back on the reins just inches from the finish line. It’s a photo finish, and the stewards have called for an inquiry.

Win or lose? It can go either way, and by that point, it’s too late for the three owners to change the result. They must wait to see if they are victorious. This is a hypertensive event for the owners.

A good trainer trains the horse to win. So, what can be done to improve the odds of winning without a steward's inquiry?

1. The "Default" Danger (35 United States Code 262)

According to MPB’s attorney, this is a quirky aspect of law in the U.S. that doesn't exist in many other countries. In the United States, unless there is a written agreement to the contrary, each joint owner can use or license the patent without the others' permission and without sharing the profits. What? It seems our nation has a tendency to preserve an individual’s rights, sometimes to the detriment of the group.

• The No-Deal Reality: Internationals, mid-caps, or anyone else who consults their patent attorney will not spend a dime without a clean title and 100% of the ownership rights. If Owner A and Owner B want to sell, but Owner C is “holding out,” the title is not clean. There is something troubling Owner C, and the deal is dead in the water.

2. The "All-or-Nothing" Assignment

In 2026, the USPTO’s Assignment Center is stricter than ever. To transfer the patent to a buyer, you need a single Assignment Agreement signed by all parties.

• The One-Document Rule: Whether there are three owners or nine, every owner must execute the same assignment document. Do not use separate documents. The "One-Document Rule" generates a steel-grade chain of title that is incredibly difficult to break. It also prevents a signer from later arguing in court: “I didn’t know what I was signing. If I had known the invention would have a billion users, I would never have signed!”

3. Use “Hereby Assigns” Terminology

This is a 2026 legal landmine. Recent court rulings have emphasized that your transfer language must be in the present tense.

• The Gold Standard: Each owner must declare in writing, “Owner hereby assigns all right, title, and interest” and specify exactly which medical patent(s) are being transferred. Upon execution, this becomes a past event (a completed transfer) rather than a vague, unknown future promise.

4. The “Government or Healthcare Provider” Addendum

When an owner is a University or a Hospital, they likely have a Bayh-Dole obligation to the government.

• The Closing Preparation: The owner must report the potential sale to the Feds and determine if the government has “march-in rights” on the medical patent. Depending on the answer, the buyer could bolt or stay. This provision is like full grandstand at the racetrack; the buyers can get spooked in the home stretch.

The President’s Viewpoint

After the assignment is executed, don’t forget to file it with the USPTO. At MPB, if it’s not filed, we have no way to know anything about the status of the title.

Having these four suggestions "groomed and ready in the barn" before the final furlong greatly increases your odds of winning the trifecta—even if there is a stewards’ inquiry.