Legal Question in Intellectual Property in District of Columbia

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.

Re: Who Owns the IP

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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.