How can I designate ownership of a patent? 3 Answers as of September 08, 2015

Is there boilerplate language that can be used in an Operating Agreement for an LLC that designates ownership of a patent to the LLC when the patent is developed by an LLC member?

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Sebby Law Office
Sebby Law Office | Jayne Sebby
The transfer of a privately-owned patent (or any other property) should not be in the Operating Agreement. It should be in a separate document transferring the right to exploit the patent (license) or ownership of the patent itself (sale) to the LLC. The terms of the transfer should be very specific, including what happens to the patent should the LLC terminate. The owner should also notify the Patent Office of the license or sale.
Answer Applies to: Nebraska
Replied: 9/8/2015
Banner & Witcoff, Ltd. | Ernie Linek
Ownership of intellectual property created by employees can be pre-assigned as part of an employment contract. If any employee does not sign - do not hire them - it will only create legal issues down the road. Sample language is as follows: If, during the course of my employment with COMPANY, I create, invent, design, develop, contribute to or improve any works of authorship, inventions, intellectual property, materials, documents or other work product ("Works"), or have already done so, either alone or in conjunction with third parties, at any time during my employment by COMPANY and within the scope of such employment or status and/or with the use of any COMPANY resources, I shall promptly and fully disclose such Works to COMPANY, and I hereby irrevocably assign, transfer and convey, to the maximum extent permitted by applicable law, all rights and intellectual property rights therein (including rights under patent, copyright, trademark, trade secret, unfair competition and related laws) to COMPANY, or such other entity as COMPANY shall designate. I agree to maintain any type or form of records, execute any further documents and take any further actions as requested by COMPANY to assist it in validating, effectuating, maintaining, protecting, enforcing, perfecting, recording, patenting or registering any of its rights hereunder. If I am unable to execute a document or take any action for any reason, I hereby irrevocably designate and appoint COMPANY and each of its duly authorized agents or designees as my agent and attorney-in-fact, to act in my behalf in all applicable instances, including in any government authorities or agencies.
Answer Applies to: Massachusetts
Replied: 9/8/2015
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
It is not a "designation" . The document is an "Assignment". One or more of the inventors assigns all or part of their invention to a company, corporation, LLC or to another person. The assignment is a notarized document that is filed with the patent office.
Answer Applies to: California
Replied: 9/8/2015
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