QUESTION
I am forming a relationship for the purpose of submitting a patent application for my invention. I have concerns about several things before I sign it
Asked on Dec 31st, 2013 on Patents - Massachusetts
More details to this question:
1. w/o any agreement except for non disclosure /non compete I have orally and in print share my IP with my proposed partner. 2. The language in an informal version of the partnership agreement states-'The patent application lists the inventor (me) assigns (my partner) 50% ownership.' I thought that assignment always transferred 100% rights. Also-part of our 'verbal agreement' is that my 'partner' is paying for all patent attorney fees as well as application fees. I am not certain if this attorney is solely working for the partner's interest or 'ours.' Should there not be several and at least 1 large-comprehensive contract? I also want to assign my rights to my wife in case of my death. Lastly---is it essential that I retain my own attorney?
1 ANSWER
Yes, a 50% interest in a patent can be transferred. Every aspect of the agreement that is important to you should be in writing and all of the provisions should be in a single document so as to avoid issues as to whether one supercedes the other. In this situation, the attorney is likely working solely for your potential partner if you are not contributing to his payment and have had no direct contact with him. You should ask the attorney if he is representing the partnership being formed or your future partner. Due to inherent conflicts of interest in this type of situation, the attorney could not advise both parties, especially without a waiver from you, which I assume you have not signed. If you are smart, you will get your own attorney to insure that your interests are protected.
Answered on Jan 03rd, 2014 at 3:29 PM