[Patentpractice] Patent Assignment question
Randall Svihla
rsvihla at nsiplaw.com
Thu Sep 18 00:57:40 UTC 2025
I think the dissolved entity may be irrelevant. The inventor never assigned his rights in the invention to the dissolved company, so he still owns his right in the invention and can assign it to the new company.
From: Dale Quisenberry <dale at quisenberrylaw.com>
Sent: Wednesday, September 17, 2025 8:29 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>; Charlene L. Odom <COdom at maynardnexsen.com>
Subject: Re: Patent Assignment question
Right.
Need to consult applicable state law, including corporate law, and consult counsel in that state.
The dissolved corporation would likely need to be reinstated first before it would have the capacity to enter into any corporate act, contract, etc. But again, consult counsel in the relevant state.
Is there any agreement or obligation on the part of the inventor to assign to the dissolved entity?
C. Dale Quisenberry
Quisenberry Law PLLC
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www.quisenberrylaw.com<http://www.quisenberrylaw.com>
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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Randall Svihla via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Wednesday, 17 September 2025 at 7:20 pm
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>, Charlene L. Odom <COdom at maynardnexsen.com>
Subject: Re: [Patentpractice] Patent Assignment question
Who is going to sign on behalf of the dissolved company?
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Charlene L. Odom via Patentpractice
Sent: Wednesday, September 17, 2025 6:45 PM
To: patentpractice at oppedahl-lists.com
Cc: Charlene L. Odom <COdom at maynardnexsen.com>
Subject: [Patentpractice] Patent Assignment question
We are currently handling a matter involving a patent application that was originally filed under a company that has since been dissolved. However, prior to the dissolution, the inventor did not execute the assignment of rights to the original company.
To ensure proper chain of title, we would like to confirm the appropriate course of action. Specifically, should the inventor now execute the assignment to the dissolved entity, followed by a subsequent assignment from the dissolved entity to the current holding company? Or would it be more appropriate for the inventor to assign the rights directly to the holding company?
We want to ensure that the assignment record is clear and compliant with USPTO requirements.
Charlene L. Odom
Paralegal
|
Intellectual Property
P: (864) 282‑1172
COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>
104 South Main Street
Suite 900
Greenville
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South Carolina
29601
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