[Patentpractice] Patent Assignment question
Carl Oppedahl
carl at oppedahl.com
Thu Sep 18 15:35:47 UTC 2025
What he said.
On 9/18/2025 8:30 AM, Patent Lawyer via Patentpractice wrote:
> What he said ("/you have a loose end that requires legal research and
> consultation with competent counsel/’).
>
> You are getting good answers here, but this is a legal issue (problem)
> and not just about what paper to file in the Patent Office.
>
> Someone is going to need to conduct legal analysis and get legal
> opinions (which are not provided by this group).
>
>
>> On Sep 18, 2025, at 9:37 AM, Dale Quisenberry via Patentpractice
>> <patentpractice at oppedahl-lists.com> wrote:
>>
>> 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
>>
>> <image001.jpg> <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>
>> *Date:*Thursday, 18 September 2025 at 7:54 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 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
>>
>> <image001.jpg> <https://www.maynardnexsen.com/>
>>
>> *From:*Dale Quisenberry <dale at quisenberrylaw.com>
>> *Sent:*Wednesday, September 17, 2025 11:09 PM
>> *To:*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>; Charlene L. Odom
>> <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>
>> *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>
>> *Cc:*Dale Quisenberry <dale at quisenberrylaw.com>, Randall Svihla
>> <rsvihla at nsiplaw.com>, Charlene L. Odom <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
>> 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> 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>
>> *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
>> 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>
>> 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
>>
>> ,
>>
>> South Carolina
>>
>>
>> 29601
>>
>> <image001.jpg> <https://www.maynardnexsen.com/>
>>
>>
>>
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>>
>> Confidentiality Notice - The information contained in this e-mail and
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>> 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.
>>
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>
>
>
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