Legal Question in Intellectual Property in Massachusetts

Reverse a Patent Assignment

I assigned a patent to an IP enforcement company called GPCI. After a year, the attorney there says they have a buyer for my patent for $200K. (My share is half.) I want to prevent the sale from occuring on the basis that GPCI did not pursue the licensing option that was part of our letter of agreement - and which I believe would have yielded 10- or 20-fold returns. How can I prevent the sale and regain control of my patent?


Asked on 7/06/06, 9:56 pm

3 Answers from Attorneys

Re: Reverse a Patent Assignment

Whether the contract to assign the patent may be cancelled depends upon whether there has been a breach of the terms. Before I can be more specifc, I would need to review the letter of agreement and discuss with you what efforts were taken with respect to it; we would also have to investigate licensing opportunities.

If you wish to set a time to speak with me, please contact 978.250.4255 x13.

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Answered on 7/06/06, 10:41 pm
John Brooks Law Offices Of John J. Brooks III

Re: Reverse a Patent Assignment

The steps that you should consider will be very dependant upon the language of your agreement and the actions performed by, or not performed by both you and GPCI. What happened compared to what should have happened as described by the words of the agreement?

You will also want to review the agreement to see if there are any provisions addressing anything you do to "prevent the sale."

To be fair to you, a lot more facts should be considered before a good recommendation can be made. There appears to be enough money at issue to justify you having a more detailed discussion with an Intellectual Property attorney.

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Answered on 7/07/06, 12:17 am
Brett Dorny Law Office of Brett N. Dorny

Re: Reverse a Patent Assignment

You should definitely contact a patent attorney to discuss this matter. Your rights will depend entirely upon the wording of the assignment.

I presume that you did not consult an attorney when you assigned the patent to GPCI. If you were seeking a licensees for your patent, there are much better ways to set up the relationship than an outright assignment.

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Answered on 7/09/06, 8:42 pm


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