[Patentpractice] Patent Assignment question
Carl Oppedahl
carl at oppedahl.com
Fri Sep 19 13:23:19 UTC 2025
Yes, this is a reminder that when we are crafting an assignment, we
might be reciting a transfer of any of three things that are not at all
the same as each other:
* the ownership of the invention
* the ownership of the priority application itself
* the ownership of the right to claim priority from the priority
application
These are not at all the same thing. Depending on what exactly the
problem (with the way the priority application got filed) is, maybe you
only need one or two of these three things.
To take another of David's points ... depending on which Designated
Office we are targeting, what needs to have happened is that the cleanup
paperwork (that cleans up the mistakes that got made when the priority
application was filed) will have take place /*chronologically prior to*/
the filing of the second patent application (here, the PCT application).
Meaning that it is important to get advice of competent counsel
regarding each Designated Office we are targeting. Here, you can see
that one of the places where David's client wanted to enter the
national/regional phase was EPO. And so he got advice of EP counsel.
On 9/19/2025 4:17 AM, David Boundy via Patentpractice wrote:
> 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 <mailto:COdom at maynardnexsen.com>
>
>
>
>
> 104 South Main Street
> Suite 900
>
> Greenville
>
>
>
> ,
>
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>
> South Carolina
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>
> 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 <http://www.quisenberrylaw.com/>
>
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>
> *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/>
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>
> 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
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> doctrine and other applicable privileges. This email is
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> 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
>
> <https://www.maynardnexsen.com/>
>
>
>
>
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