Legal Question in Intellectual Property in Texas

Re: Is this patent assignment enforceable?

The place to start is with the assignment document. Do you have a copy of it? If so, then read what it says. According to the terms of the assignment agreement, what compensation, if any, are you entitled to receive in exchange for your assignment of rights in the invention? Often, an assignment to a company by an inventor/employee involves only a token compensation? However, you said you were a co-owner of the company. What type of entity is the company? A partnership, corporation, etc? The type of entity and any written agreement specifying the terms of your ownership rights are also relevant to your entitlement to compensation for use of the invention. Also, you say there was no assignment of rights in the utility patent. Normally a written assignment of rights in an invention includes express assignment of all rights in any patent on the invention including continuation patents as well as foreign patent rights. In addition to the compensation issue, you need to determine whether a patent application is filed within one year of the filing date of the provisional application and that a claim of priority to the filing date of the provisional application is made.

In my opinion you should not act on your own in this matter. You should hire a patent attorney, and you should not delay in doing so. This is not an advertisment for my services. My response does not constitute the rendering of legal advice or the establishment of an attorney client relationship. The facts you have provided are insufficient to render an opinion concerning your legal rights or what actions are appropriate.

Re: Is this patent assignment enforceable?

I would have to review the assignment and other paperwork before I could make the call. It sounds like you may have a breach of contract since they are in fact using the patent without paying for it. Again, the amount of compensation would be contained in the assignment documents, I assume.

Re: Is this patent assignment enforceable?

There are undoubtedly more facts that are relevant to your situation, but there are a number of things that can be done. The first is to write both companies and notify them that the assignment was obtained by fraud and is void and will not be honored. (This should be done by a patent attorney, not you, to give it real punch.) Second is probably to change patent attorneys so that you know the attorney represents you and not the two companies. The third is to warn the companies of the potential for an infringement action if the patent issues, especially if they or any licensees of theirs are making, using or selling the claimed invention.

All of this takes money because you need legal representation to do it right. You have the potential for a major legal fight if this invention is worth enough to fight over.

I am licensed in Texas, am a patent litigator and registered patent attorney, and I would be glad to assist you in the fight, for reasonable attorney's fees. Check my website, www.burdlaw.com and call or email when you are ready to proceed.