Patent rights assignment

質問

Company S used to have a wholly owned subsidiary in the UK (“S-UK.”) S eventually shut down S-UK. S-UK held a number of patent assets.

S dissolved the S-UK legal entity circa 2010. The liquidator hired for this process did not have S-UK sign any forms expressly assigning the S-UK held patent assets to S. The liquidator claims that they were not aware of any S-UK intangible assets, including any patents. We have not found any “catch-all” assignments where S-UK assigned all of its assets, or all remaining assets, to S. We did find a board resolution authorizing the liquidator to distribute all of the assets of S-UK to its owners (of which there was just S at that time.)

We would like to register S as the owner of these patent assets. They are mostly in the U.S., EP (France, Germany, UK, mostly via the EPC). There are also some in JP, AU, CA, MX, TW.

Is there an easy way to do so under this scenario?

回答: 3 公開 & 1 非公開

Steven weinrieb
弁理士

For safety and clarity, it is probably best to have assignments registered within each country that patents exist. Sometimes, when an assignment is first executed by the inventors to a company, the assignment usually covers the fact that all rights to the invention in question covers all patents, in all countries, whatever, but it is probably better to implement assignments for each one or all of the patents in each country. The most important thing in connection with assignments is to establish a clear chain of title, so you will probably need documents evidencing the creation of S-UK by S, the assignment of the patents to S-UK, and a copy of the board resolution authorizing the liquidator to distribute all of the assets of S-UK to S. This will then effectively establish a clear chain of title from S to S-UK, and back to S.

A81310fe66
弁理士

Requirements for assignment vary from country to country, and, yes, the most important thing is to establish a clear chain of title - which can become cumbersome and expensive.
Thus, for a start it should be checked whether the patent applications and patents are still alive or revivable. Again, requirements (e.g. for timely filing responses to office actions and paying renewal fees) vary from country to country. As S-UK was disolved about six ago, many of the patent assets may be in "bad shape".
So, contact a patent attorney and provide all basic details that you are aware of (applicant name, patent application number, patent numbers...)

77f6bb54dc
弁理士

I agree with Steven and Hanns-Juergen that it would probably be best to record the assignment separately in each country because of the different requirements in each country. For example, you mentioned that the patent assets include patent cases in Australia. In Australia, an assignment document has to be executed by both the assignor and the assignee. In some countries, only the assignor needs to execute the assignment document. It may be possible to prepare an assignment document that satisfies all these requirements. However, this would require you to invest the time and effort to determine the individual requirements in each country and prepare the consolidated assignment document and get it executed. There may also be country-specific requirements including translation, notarization and legalization of the assignment document which would further complicate matters. The easiest way forward appears to be to contact your patent attorneys in each of these countries to prepare an assignment document best suited for their practice and execute the lot at the same time.

最近の質問

Do people really steal invention ideas?

I sometimes see questions on forums like Quora about how to stop people stealing your invention i...

4 5386 2
Is interpretation of known historical facts protectable under copyright law?

I am looking for useful sources on protecting copyright. I am in the process of writing a book ba...

3 6115 2
Fair Use and news feeds

What is the current wisdom on compiling news feeds on a third party website so far as copyright i...

1 3962 0
Looking for good patent firm

How to find a good patent firm to help me apply patent in USA

3 4320 2
What constitutes 'prior disclosure'?

This might be a silly question but I’m a bit confused by ‘prior disclosure’ as it applies to pate...

2 4823 1

発明や知的財産について質問はありますか?
既存の質問を検索するか、専門家ディレクトリで専門家に直接お問い合わせ下さい。
(このページでは、新規の公開質問は受け付けておりません。)