Legal Question in Intellectual Property in District of Columbia

Who Owns the IP

I am the inventor of a patent. I gave the IP to my company and they filed for the patent. We signed an assignment of IP rights, stating they must pay me this year, or the rights revert to me. They cannot pay me. So the IP rights revert to me? But they have the patent? Confusing situation. Can I stop them from using the patent commercially until they pay me?

Asked on 11/27/07, 10:34 am

2 Answers from Attorneys

Daniel Press Chung & Press, P.C.

Re: Who Owns the IP

Depends on the terms of the documents. If they signed an assignment to you (without reservation of a license), and didn't pay you, you may be able to assert an infringement claim against them. I would be glad to take a look at your documents and advise you.

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Answered on 11/27/07, 10:48 am
Lee Berlik BerlikLaw, LLC

Re: Who Owns the IP

READ THIS FIRST: This communication is not intended as and should not be interpreted as legal advice. Rather, it is intended solely as a general discussion of legal principles. You should not rely on or take action based on this communication without first presenting ALL relevant details to a competent attorney in your jurisdiction and then receiving the attorney's individualized advice for you. By reading the "Response" to your question or comment, you agree that the opinion expressed is not intended to, nor does it, create any attorney-client relationship, nor does it constitute legal advice to any person reviewing such information, nor will it be considered an attorney-client privileged communication. If you do not agree, then stop reading now!

RESPONSE: Your rights will depend largely on what the signed document states. You may wish to point out the payment default and demand an assignment of the patent, if the agreement permits you to do that. You may also be able to sue for infringement and recover damages and/or injunctive relief (i.e., an order that would prevent them from using the patent). Relevant considerations include whether you are going to quit the company and compete with it or merely license the product to a bunch of other companies.

If the "shop rights doctrine" applies, the company may have an implied license to use the patent (again, depending on how the contract is worded). In the absence of an agreement to the contrary, the employee usually owns the invention but the employer gets a license to use it. For a more detailed response, give me a call or send me an email.

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Answered on 11/27/07, 1:21 pm

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