[Patentpractice] Patent Assignment question
Dale Quisenberry
dale at quisenberrylaw.com
Thu Sep 18 13:37:48 UTC 2025
Charlene,
I’m afraid I have more questions than answers.
It sounds like the patent application is still owned by the inventor.
So if I had filed that application I would not have listed anyone or entity under Applicant or Assignee and the Applicant would have been automatically deemed the inventor.
I have never had a situation where the inventor owned the application but another person or entity was listed as Applicant. I don’t know the rules on whether that is proper or not (for some reason I feel like it is), and if so when it is. I would find that out. I suspect there are many on this list who know the answer.
It may be necessary to file a corrected ADS and delete CLO Inc. as the Applicant. I would investigate that possibility.
I still think you have a loose end that requires legal research and consultation with competent counsel in the state of formation of CLO Inc. concerning the facts of your situation, to determine whether dissolved CLO Inc. ever had or should have had ownership of the patent application. How does the fact that CLO Inc. was named as the Applicant inform that legal analysis?
Dale
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: Charlene L. Odom <COdom at maynardnexsen.com>
Date: Thursday, 18 September 2025 at 8:27 am
To: Dale Quisenberry <dale at quisenberrylaw.com>, Tim Ackermann <tim at ackermannlaw.com>, For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>
Subject: RE: [Patentpractice] Patent Assignment question
No, only as the Applicant on the ADS.
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
,
South Carolina
29601
[cid:image001.jpg at 01DC287E.5ADBD920]<https://www.maynardnexsen.com/>
From: Dale Quisenberry <dale at quisenberrylaw.com>
Sent: Thursday, September 18, 2025 9:23 AM
To: Charlene L. Odom <COdom at maynardnexsen.com>; Tim Ackermann <tim at ackermannlaw.com>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Randall Svihla <rsvihla at nsiplaw.com>
Subject: Re: [Patentpractice] Patent Assignment question
Did the ADS name CLO Inc. as Applicant and Assignee?
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: Charlene L. Odom <COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>>
Date: Thursday, 18 September 2025 at 7:54 am
To: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>, Tim Ackermann <tim at ackermannlaw.com<mailto:tim at ackermannlaw.com>>, For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>
Subject: RE: [Patentpractice] Patent Assignment question
No there is only one inventor… see example below
Charlene Odom is the sole inventor and owns
CLO inc. but never assigned to CLO inc. CLO inc is now dissolved and I have a new company with a 50 percent ownership called CLO Intellectual Property Holding Company LLC.
Can I sign the assignment as the inventor and co-owner or will both owners of the new company have to sign?
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
,
South Carolina
29601
[cid:image001.jpg at 01DC287E.5ADBD920]<https://www.maynardnexsen.com/>
From: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>
Sent: Wednesday, September 17, 2025 11:09 PM
To: Tim Ackermann <tim at ackermannlaw.com<mailto:tim at ackermannlaw.com>>; For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>; Charlene L. Odom <COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>>
Subject: Re: [Patentpractice] Patent Assignment question
Correct. Perhaps there was an employment agreement that not only said I agree to assign but I hereby assign.
The risk is that if the patent is assigned to the holding company, and then files a lawsuit for patent infringement, and then the defendant uncovers the relevant facts during discovery and moves to dismiss for lack of standing / subject matter jurisdiction.
Do the necessary investigation now and find out what the facts are.
C. Dale Quisenberry
Quisenberry Law PLLC
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: Tim Ackermann <tim at ackermannlaw.com<mailto:tim at ackermannlaw.com>>
Date: Wednesday, 17 September 2025 at 8:07 pm
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Cc: Dale Quisenberry <dale at quisenberrylaw.com<mailto:dale at quisenberrylaw.com>>, Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>, Charlene L. Odom <COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>>
Subject: Re: [Patentpractice] Patent Assignment question
Randall, isn't it possible the inventor had an obligation to assign?
And, if so, perhaps the subsequent owner of the assets of the dissolved company could enforce that obligation?
Tim Ackermann
The Ackermann Law Firm
E: tim at ackermannlaw.com<mailto:tim at ackermannlaw.com>
P: 817.305.0690
F: 214.453.0810
W: ackermannlaw.com<http://ackermannlaw.com>
O: 1785 State Hwy 26 Ste 200
Grapevine TX 76051
On Wed, Sep 17, 2025 at 7:59 PM Randall Svihla via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
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<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>; Charlene L. Odom <COdom at maynardnexsen.com<mailto: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
13910 Champion Forest Drive, Suite 203
Houston, Texas 77069
(832) 680.5000 (office)
(832) 680.1000 (mobile)
(832) 680.5555 (facsimile)
www.quisenberrylaw.com<http://www.quisenberrylaw.com>
This email may contain information that is confidential and subject to the attorney-client privilege, work product doctrine and other applicable privileges. This email is intended to be received only by those to whom it is specifically addressed. Any receipt of this email by others is not intended to and shall not waive any applicable privilege. If you have received this email in error, please delete it and immediately notify the sender by separate email. Thank you.
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Randall Svihla via Patentpractice <patentpractice at oppedahl-lists.com<mailto: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<mailto:patentpractice at oppedahl-lists.com>>
Cc: Randall Svihla <rsvihla at nsiplaw.com<mailto:rsvihla at nsiplaw.com>>, Charlene L. Odom <COdom at maynardnexsen.com<mailto: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<mailto: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<mailto:patentpractice at oppedahl-lists.com>
Cc: Charlene L. Odom <COdom at maynardnexsen.com<mailto: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
,
South Carolina
29601
[cid:image001.jpg at 01DC287E.5ADBD920]<https://www.maynardnexsen.com/>
Confidentiality Notice - The information contained in this e-mail and any attachments to it is intended only for the named recipient and may be legally privileged and include confidential information. If you are not the intended recipient, be aware that any disclosure, distribution or copying of this e-mail or its attachments is prohibited. If you have received this e-mail in error, please notify the sender immediately of that fact by return e-mail and permanently delete the e-mail and any attachments to it. Thank you.
--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com
Confidentiality Notice - The information contained in this e-mail and any attachments to it is intended only for the named recipient and may be legally privileged and include confidential information. If you are not the intended recipient, be aware that any disclosure, distribution or copying of this e-mail or its attachments is prohibited. If you have received this e-mail in error, please notify the sender immediately of that fact by return e-mail and permanently delete the e-mail and any attachments to it. Thank you.
Confidentiality Notice - The information contained in this e-mail and any attachments to it is intended only for the named recipient and may be legally privileged and include confidential information. If you are not the intended recipient, be aware that any disclosure, distribution or copying of this e-mail or its attachments is prohibited. If you have received this e-mail in error, please notify the sender immediately of that fact by return e-mail and permanently delete the e-mail and any attachments to it. Thank you.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250918/4c82d549/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 10598 bytes
Desc: image001.jpg
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250918/4c82d549/attachment.jpg>
More information about the Patentpractice
mailing list