Long Beach, MS asked in Patents (Intellectual Property) and Intellectual Property for Mississippi

Q: How do I get an Assignee off my patent if they are out of business?

The company has been out of business for several years and I want ithe Patent back in my name. I want to make a revision and apply for another Patent with the revision.

2 Lawyer Answers
Stephen E. Zweig
Stephen E. Zweig pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
  • Patents Lawyer
  • Los Gatos, CA

A: When a company goes out of business, the company assets (like patents) usually end up reverting to the company creditors and company stockholders. So unless this is your company, and you had no creditors or other stockholders, you may be out of luck.

In terms of filing a revision -- unless there is a continuation or continuation in part of this patent filed and either pending or recently abandoned, the USPTO will use the original patent against any revision you (or any one else) files.

You can still try to file a new patent application that is an improvement or variation on the original patent application (even if you don't have ownership back). But you will need to be able to defend why your revision is not-obvious.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›

A: If the assignee of your patent is out of business, you may be able to file a petition with the United States Patent and Trademark Office (USPTO) to have the ownership of the patent transferred back to you. This process is called a Petition to Revoke or Rescind Assignment. You will need to provide evidence that the assignee is no longer in business, such as a bankruptcy filing or a notice of dissolution.

If the USPTO grants your petition, you will need to record the assignment revocation with the USPTO and file a corrected cover sheet for the patent application with the updated ownership information.

It's important to note that if the assignee is no longer in business, they may not be available to sign any necessary documents to transfer ownership back to you. In this case, you may need to seek legal counsel to determine the best course of action to regain ownership of your patent.

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