Skip to main content

Who owns IP/Patent rights in a General Joint Venture Agreement?

Dallas, TX |

1. Is a JV agreement null and void if one Managing Member intentionally lets the JV got into forfeiture without notification to the other JV partners?
2. Who owns IP/Patent rights that resulted from the General JV Agreement if said JV only details distribution of investment funding, debts and profits, saying nothing about product assets?
3. If a Managing Venturer that asks for a greater percentage of ownership in the JV in exchange for greater investment, but does not document it or reveal the JV LLC is in forfeiture, does that agreement stand?
3. Can a Managing JV with majority % give a percentage of his shares to a new investor without the knowledge of the other JV members?
4. Can a Managing JV partner with majority % block the other JV partners from the IP/Patent Pending assets?

Attorney Answers 4

Posted

As far as the ownership of patents, there are many factors that can affect ownership. First, the inventor may own the patents, if she did not execute an assignment to the JV. If the patents were properly assigned to the JV, they will remain the property of the JV until it is wound down and the assets are disposed of. Generally, the JV will have provisions in its operating agreement that address how it is to be wound down, and the majority member [block] will have control of the wind down process. However, minority members must receive fair market value for their stakes - I have handled a number of cases where a majority partner attempted to transfer patents out of a partnership or LLC without paying fair compensation, and obtained some nice settlements. It is almost always easier for the majority holders to deal fairly with the minority from the get go.

As far as the other issues you raise, you have a number of detailed issues that, quite honestly, would take many hours to research and provide a clear answer for. You will need to speak with an attorney that is well versed in partnership issues in Texas.

Good luck!

This answer is not a substitute for professional legal advice. This answer does not create an attorney-client relationship, nor is it a solicitation to offer legal advice. If you ignore this warning and convey confidential information in a private message or comment, there is no duty to keep that information confidential or forego representation adverse to your interests. Seek the advice of a licensed attorney in the appropriate jurisdiction before taking any action that may affect your rights. If you believe you have a claim against someone, consult an attorney immediately, otherwise there is a risk that the time allotted to bring your claim may expire.

Mark as helpful

2 lawyers agree

Posted

You ask a number of very complicated questions that cannot be answered simply by email. Since we are both in Dallas, and my firm has a lot of experience with these issues, I would welcome the opportunity to set up a no fee consultation to give you guidance and set forth your options. We would be happy to represent you once we are certain that we don't already represent another party to these transactions, as is required for any ethical lawyer before answering these questions.

Mark as helpful

2 lawyers agree

1 comment

Asker

Posted

thank you Mr. Wald. We'll will indeed contact you.

Posted

While I cannot give you legal advice in this forum, I believe your question is far to complex to handle is they type of forum. The answers will depend upon many factors, including the exact language of the JV Agreement and the type of IP involved. The answer could vary and differ if dealing with copyrights or transcripts or patents.

Your really should discuss this with a local IP attorney.

THIS RESPONSE IS INTENDED TO CONVEY GENERAL INFORMATION ONLY. IT SHOULD NOT BE RELIED UPON OR TAKEN AS LEGAL ADVICE. FURTHER, THIS RESPONSE IS NOT INTENDED TO AND DOES NOT CREATE AN ATTORNEY-CLIENT RELATIONSHIP.

Mark as helpful

2 lawyers agree

1 comment

Asker

Posted

Thank you guys. Really appreciate your feedback and advise. Just trying to figure out what's best to do here. Seems from other advise and research done we've gotten from folks viewing the JV that the whole thing is in question, because there is a promissory loan in play from his legal firm to him personally, so looks like he, attorney/JV partner didn't actually invest any of his own money, didn't execute fiscal records as outlined in his own writing of the JV, didn't advise anyone in the JV of giving assets to someone in his law firm, signed a promissory note for the investment amount he characterized as being his money, listed the other JV partner as the resident agent for his state tax assessor office without that JV partner's knowledge or consent and the signature definitely is not the JV partner's and the address is his. It also seems he's intentionally let the company that the JV was written or go into forfeiture at the tax assessor's office and started another company, attributing the taxes from the first to the 2nd company an assigning all the patents to this 2nd company after characterizing it as a subsidiary of the original JV company to the JV parnters. He's also making a lot of threats to contractors, calling them employees instead of contractors even though his office was responsible for doing all the corporate financials and legal paperwork ... kinda bullying them into feeling like they have to do what he says. Stating only he has the rights to with what he wants with the assets of the company because he owns a greater interest - does he if he actually didn't put any of his own money in to fund the project, as was his role? UGh ... just a big mess really and he's not paying anyone anymore, so we're all scrabbling just to get whatever jobs we can to pay the bills. Definintely no money to hire an attorney, even as a team of 10-14 members. We're considering doing a KickStarter campaign to help raise funds, but obviously that would mean explaining why we need a legal fund, and not sure what we can say without being accused of defamation his character and the company itself is still in business, so our hopes are that it can continue and at some point we come back. Maybe that's a pipe dream though. We all agreed to dramatically reduce fees to make this project push forward, and were promise by him that ifhwe hung in there he'd put the money in for marketing to get the real traffic flowing and pay us better. But seems now all he was interested in were the patents. We are all in a state of shock here, so please excuse my ramblings. Just never thought we'd see this coming from a IP/Patent/Trademark attorney running a multi-lawyer firm. We're also worried that if this is criminal stuff, as it seems to be, if we should be reported to some type of official authorities for what seems to be criminal behaviors, but not sure who to go to. Maybe you can help us there?

Posted

It sounds like you have many claims for breach of fiduciary duty against the managing member. You need to consult with legal counsel as soon as possible. You may believe that you do not have sufficient funds, but there may be lawyers who are willing to take on a project like this on a contingent fee basis. Further, if the managing partner has wrongfully converted assets of the joint venture, you may wish to report this to the State attorney general's office or, if the managing partner is a lawyer, the Texas bar association. There is simply no substitute in a situation like this for retaining and consulting with counsel.

Mark as helpful

2 lawyers agree

1 comment

Asker

Posted

Thank you Mr. Ross. We're trying to find one as we speak. It helps to have the right words though, TY so much!

Business topics

Top tips from attorneys

What others are asking

Can't find what you're looking for?

Post a free question on our public forum.

Ask a Question

- or -

Search for lawyers by reviews and ratings.

Find a Lawyer

Browse all legal topics