Assignment to company

[elman]

What is the name of your state?New Hampshire.

I am the inventor and have not assigned my patent to the company in which I have an ownership position. I have no agreement to assign intellectual property rights to the company or my partner. I worked without a written or oral agreement with the title of president. I was not hired to invent. The company paid all the expenses and fees for the patent process. Nearly all the claims in the patent were the result of my independent work prior to my involvement with this company. I was paid a minimum amount as a partner to cover living expenses.

Am I obligated to assign my patent to the company?

 

[divgradcurl]

Am I obligated to assign my patent to the company?

Absent an agreement to do so, no.

 

[elman]

NH

divgradcurl - I have been told that an officer of a company is bound by fiduciary duty to assign his patent to the company. Would there be any case law that may back-up this type of assignment? I assume you are a practicing IP lawyer. I very much appreciate your comments.

 

[divgradcurl]

I assume you are a practicing IP lawyer.

I am, but not in NH. I don't know if there is any corporations law that would require a corporate officer to assign the patent. I guess the one thing I could see is that if the patent was part of the "capitial" that you used to buy into the company, then you would have a duty to sign over the patent -- but that should be part of the contracts you signed during the formation stages of the company.

You probably need to talk with a local attorney with experience in start-ups and corporate matters. This isn't an IP question -- it's a corporations or contracts question.