Are there problems in my partial assignment patent case? 2 Answers as of January 31, 2011I am being asked to partially assign my US patent to a Delaware LLC in return for an ownership position. I am only a co-owner of the patent and there is one other co-owner. He is not in agreement but the LLC is willing to just take partial assignment from my 50%. I negotiated a performance type clause. Meaning if they sat on patent and made no forward momentum that the IP would revert back to me at a certain date. I am supposed to get language incorporated into assignment agreement stating such and the LLC will also incorporate similar language into operating agreement. The patent has never been assigned in the past. After researching on WIPO website I found the following: What is Assignment? In contrast, an assignment is irrevocable. An assignment involves the sale and transfer of ownership of the patent by the assignor to the assignee. This transfer of ownership is permanent and irrevocable. Just as when any other asset or property is sold, its sale results in the former owner being permanently divested of that ownership." Now I am concerned that the death clause provision would not stand up in the court of law, or in patent law. Please help me understand to see if my concern is accurate.
Devon & Associates | Marcia A. Devon
I would have to review your documents, including the proposed patrial assignment document (if there is one), the document with the "death clause" you refer to, and be able to have a conversation with you in order to properly answer your questions. I do think the quote from WIPO you cited is misleading (maybe it is a bad translation). Your questions could most likely be resolved by a single consultation with a patent attorney, provided you brought all of the pertinent documents with you to the meeting. The patent attorney could also assist you in drafting the appropriate documents.
Answer Applies to: California
Mark S. Hubert PC | Mark Hubert
Once they own any part of your patent (even 1% of it) they can do whatever they want with the patent including selling non exclusive licenses. The only thing that cant do is sell an exclusive license because that would affect the rights of the other patent holders.
Answer Applies to: Oregon