Intellectual Property Liability | Legal Aid

Questioner

I transferred intellectual property to a company. This company then concealed its revenue and, after becoming disappointed with the product, allowed the patents to expire. After a patent application becomes public, the protection, once expired, cannot be reinstated. Furthermore, the company refused to return the intellectual property, even though it still had value, even though they saw no meaningful exploitation opportunities. Can I hold the company liable for destroying the product and/or for consequential damages?

Lawyer

The agreements made in the context of the transfer or use of IP rights are usually very complex from a legal point of view. To be able to advise you properly, I need to know what agreements have been made. are made precisely. For this purpose, I will need to review the agreement concluded with the other party. I specialize in IP law and am happy to assist you with this matter. If you wish, please feel free to contact me to discuss the matter further. Initial contact is free of charge and without obligation.

Lawyer

Ir/Madam, If you want to hold a company liable, you need a basis. This could be, for example, a tort or breach of contract. To assess whether the requirements for such a basis have been met, I need insight into the actual situation, such as the agreements made between you and the company. You likely assigned your patent, or the right arising from the patent application, to this company by deed. From that moment on, the company is the patent holder. The company now enjoys the exclusive right to manufacture, market, etc., the patented product for its business. It's possible that the deed contains a defect that makes the assignment invalid. Usually, the deed will be formally correct. Therefore, it often depends on the content of the deed. What reservations are included in the deed? Violation of any reservation could constitute a basis for damages. From your question, I understand that the company would be obligated to "return" the patent to you. In my opinion, the company is not obligated to do so in principle, as it is the owner/holder of the patent and can decide for itself what to do with it. This is only different if this is evident from the reservations included in the deed of transfer. Consequently, the company is free—in the absence of reservations—not to renew the patent if it so chooses. My advice: weigh the costs and benefits carefully. Litigation is very expensive and time-consuming, and only worthwhile if you have strong arguments. Perhaps you could work with one of the legal advisors at the legal aid center to write a letter to the company and try to obtain compensation that way.