Q: Can individual inventors who are now part of a company take a patent in their own direction without consent of company?
Long story short: I am an inventor of a technology. In order to help move the invention forward, I brought in some investors. The device is patent in the USA assigned to a particular company that was formed and with four people (including myself) listed as inventors. Now there is a disagreement among parties and I want to know if USA patent law allows individuals listed on the patent to move forward on their own in promoting the invention without the consent of other member involved. There is no preconceived agreement in place on paper that prevents this from happening. Thank yo for your help.
A:
This is a mess and will need to be sorted out by attorneys that become familiar with the actual facts. But here are some issues that you need to think about.
1) You say that you are the inventor but you listed several people on the patent as inventors. Were they co-inventors? US patent law starts out with all co-inventors being co-owners. If they were not co-inventors, then you told an untruth to the PTO and you have complicated things. Your patent attorney can help you clean up the inventorship on the patent but you are apt to need signatures from the others who were listed as co-inventors in error.
2) If the patent or the underlying application was assigned over to the company, then barring something unusual like fraud, then there is an assignment and you do not own the patent rights. An inventor that has assigned rights in a patent over to a company has no more right to make unauthorized use of that patent than I do. Did you get stock or anything else of value from the company? Was there a provision in an agreement that if the company did not reach certain commercial milestones by a certain time, that you could get the patent rights back?
3) Note the attorneys that worked on behalf of the company cannot help you seek options for taking back control of the patent rights. Those attorneys have a duty of loyalty to the company and not to you. So you will need to find another attorney and pay for that attorney using personal not company money to assess this situation.
If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at
https://lawyers.justia.com/lawyer/kevin-e-flynn-880338
Kevin E Flynn
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