Q: Does my business partner need to transfer his patent to our new LLC?
My business partner personally holds a patent for a safety product. We are forming an LLC to manufacture and sell the product. Is it necessary (or preferred) for him to assign ownership of the patent to the LLC? Can the LLC license the patent (to other manufacturers) without owning it? Is he personally exposed to liability if he retains ownership?
A:
I won't give you final answers as this question gets beyond my national patent registration and touches on items related to Texas law. I am licensed in North Carolina and do not hold a state license in Texas.
I will give you some things to discuss with your attorney.
1) What types of patent damages are you forfeiting by not having the patent owned by the entity that actually sells the patented product?
2) Will business partners (customers, investors, suppliers) be wary of signing agreements with a company when the company does not have ownership of the patent (and possibly not even a written license to use)?
3) Given how little it costs to assign patent rights and record the assignment, are people going to read some hidden motive for the failure to assign?
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