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Patent Assignments

Oxnard, CA |

I'm the inventor of record on four issued patents and one that is currently under review. To date, all of these patent assignment documents have only been partially executed between myself and my current, and soon to be, former employer. I signed off on the assignments but never received fully executed acknowledgement copies and a required $1 consideration for each of the assignments. Do any legal options exist related to retaining/reclaiming the rights to this intellectual property? I should note that the four issued patents are more than three plus years old. If so, I would obviously need qualified counsel moving forward.

Attorney Answers 2

Posted

I don't think the lack of a countersigned agreement from your employer or you not receiving the $1 consideration will give you much of an argument against these assignments.

It's not clear that you even had to receive the countersigned agreements (do the assignments say so?), since assignments are one-way transactions anyway.

As for the $1, I think a judge would consider that payment a nominal gesture, since the real consideration (and your assignments may say as much) is your employment itself.

Also, general employment law says that anything you produce while in the employ of hyour company belongs to them.

Finally, the fact that some years have gone by since you signed the assignments, presumably without any assertion of ownership on your part, adds further strength to the employer's assertion of ownership.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

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Posted

Unless you have a written employment agreement providing that you maintain ownership of the inventions that you created while employed, your inventions and patents belong to your employer and you have no legal interests or rights relating to them. Note that one of the amendments to patent law in the American Invents Acts allows patents to be prosecuted in the names of their owners rather than in the names of the individual inventors---in recognize of the fact that invention assignments have been much ado about nothing in most situations.

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