Patent assignment form ? how important is it?


3

Hi fellow entrepreneurs,

I am the person who posted this question about a conflict with my co-founder. During discussion with my attorney, I discovered that while we filed for the patents (earlier this year) for our technology (which I invented!), but I never signed the assignment forms to this company. Does this mean I, as an individual, legally "own" the patents if/when they are issued? Do I have any legal leverage due to this?

Curious to get your thoughts. I totally understand you are not attorneys and this doesn't constitute legal advice. I am working with professional attorneys, but would love to hear your opinions.

Thanks for all your help and support in this difficult situation.

Legal Patent Founders Intellectual Property

asked Aug 23 '13 at 02:58
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Gupshup
52 points

3 Answers


4

One would need to examine all relevant documents and facts to provide a definitive answer.

Based on the limited information you have provided, it appears that you own the patent application and will own any patent that may issue - which, presumably, would give you leverage.

However, the company might have rights based on an implied license or other considerations.

I hope you and your colleagues can come to an amicable resolution of this matter from a business perspective. A legal battle will waste everyone's time, energy and money.

Disclaimer: This answer does not establish an attorney-client relationship.

answered Aug 23 '13 at 06:25
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Dana Shultz
6,015 points
  • Hi, I have a follow-up question...I am in a similar situation. Does a patent assignment signed for a provisional carry over to the full patent? For example, I assigned the provisional, but did not assign the full patent. – Mikos 5 years ago
  • The answer depends on how the assignment provision is worded. – Dana Shultz 5 years ago

3

IANAL applies, but if you did not assign the patent to the company, then the company doesn't own the patent.

BUT - as they say, the devil's in the details. You mentioned ".. while we filed for the patents" would also mean that the other person who signed on the patent also can claim ownership. And - what does your employment contract state about inventions done on company time with company computers?

answered Aug 23 '13 at 03:23
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Jim Galley
9,952 points
  • Thanks for responding. I am listed solely on the application as the inventor. AFAICT there is no mention of assigning IP to the company in my contract. I am talking to a patent attorney and business attorney. Once again thanks for your response. – Gupshup 5 years ago

3

A lot depends on what other paperwork you have signed with the company.

For instance, if you have signed a proper employment agreement with the company, there should normally be some sort of IP transfer clause in that agreement. If so, I believe the assignment forms matter a lot less, because you have already promised in your employment agreement to sign assignment forms, even if they are not signed yet.

If you have no other paperwork with the company, then the assignment forms matter a lot more (note: I am not a lawyer).

Getting employees properly papered up is very important in an early stage company, and is often something people forget ... leading to situations like this.

answered Aug 23 '13 at 03:25
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Kamal Hassan
1,285 points
  • Thanks for your response. I do not intend to go after the "CThanks for your response. I do not intend to go after the "CEO" or anything....I am not vengeful and get into the armtwisting business. I just want to build a company and see my invention come to fruition. tl;dr: if indeed the patents are mine, they will be purely defensive – Gupshup 5 years ago

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