[Patentpractice] Patent Assignment question

Fri Sep 19 11:17:12 UTC 2025

I have had a similar problem.  My EP counsel urged that the paper should
*not* be an assignment,  If possibl*e*, the paper should be framed as
"right to claim priority to the provisional was assigned as of (date before
PCT filing) by operation of (whatever you can come up with)."

On Fri, Sep 19, 2025 at 1:30 AM Scott Nielson via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I encountered a similar situation where the inventor initially created
> LLC1 with the intention of assigning the ownership of a provisional patent
> application to LLC1. LLC1 was listed as the applicant in the provisional
> application on an obligation-to-assign basis. However, the inventor did not
> assign ownership to LLC1 and subsequently dissolved LLC1, creating Corp1
> instead. The inventor mentioned that it was merely a name change, which is
> inaccurate. Now, we need to file U.S. and PCT applications claiming the
> benefit of the provisional.
>
> My solution is to have the inventor sign an assignment to Corp1 on behalf
> of both the inventor and LLC1, as the inventor was the sole member and
> manager of LLC1.
>
> *Scott Nielson*
>
> 801-660-4400
> ------------------------------
> *From:* Patentpractice <patentpractice-bounces at oppedahl-lists.com> on
> behalf of Charlene L. Odom via Patentpractice <
> patentpractice at oppedahl-lists.com>
> *Sent:* Thursday, September 18, 2025 6:54 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:* Charlene L. Odom <COdom at maynardnexsen.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
>
> 104 South Main Street
> Suite 900
>
> Greenville
>
> ,
>
> South Carolina
>
>
>
> 29601
>
> <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
>
>
>
> *This email may contain information that is confidential and subject to
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> 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
> 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
>
>
>
> *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
>
> 104 South Main Street
> Suite 900
>
> Greenville
>
> ,
>
> South Carolina
>
>
>
> 29601
>
> <https://www.maynardnexsen.com/>
>
>
>
>
>
>
>
>
>
>
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