I am the inventor of a mechanism that was assigned to a client under contract. My client breached the contract for non payment at the end of the contract. I had tried negotiating for two years with both attorneys as well as negotiators. I had sent collectors after the client as well . At the end of some of my demand letters I warned the client I would revoke my assignment. This was my only recourse. I was able to revoke both power of attorney as well as the assignment rights. the assignment was revoked on the basis of wrong title of assignment associated with the patent as well as breach of contract. Ater 6 years of no action the former client had his lawyer send me a demand letter to regain assignment rights. they are threatening damages. do they have a case?
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Revoking of Patent Assignment
- Thread starter bonehead
- Start date
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divgradcurl
Senior Member
I am the inventor of a mechanism that was assigned to a client under contract. My client breached the contract for non payment at the end of the contract. I had tried negotiating for two years with both attorneys as well as negotiators. I had sent collectors after the client as well . At the end of some of my demand letters I warned the client I would revoke my assignment. This was my only recourse. I was able to revoke both power of attorney as well as the assignment rights. the assignment was revoked on the basis of wrong title of assignment associated with the patent as well as breach of contract. Ater 6 years of no action the former client had his lawyer send me a demand letter to regain assignment rights. they are threatening damages. do they have a case?
What state are you in?
How did you revoke the assignment?
Was the assignment ever recorded?
The assignment was recorded before the patent was issued and I was able to revoke it before the patent was issued. it was recorded by the uspto but the patent attorney recorded the wrong assignment with the patent. I revoked power of attorney then was able to show the assignments division the error.
divgradcurl
Senior Member
The assignment was recorded before the patent was issued and I was able to revoke it before the patent was issued. it was recorded by the uspto but the patent attorney recorded the wrong assignment with the patent. I revoked power of attorney then was able to show the assignments division the error.
You still didn't answer the question about what state you are in. This is not really a patent law question, it is really a contract question, and whether or not the complaint is timely will depend on the statute of limitations for a contract action in your jurisdiction.
If it is timely, and you are in the U.S., the other side may very well have a claim against you. Your remedy for their breach was to sue for breach of contract, not breach the contract yourself.
divgradcurl
Senior Member
In that case, they might have a case, depending on all of the facts of the situation. Fortunately, if they do try and sue you, you are still within the statutory period to counter-claim against them for breach of contract, so maybe this can all get sorted out the way it should have to begin with.
Just something to keep in mind for the future -- unless revoking the assignment was an express remedy in your written contract, you didn't have the authority under the contract to do so, and therefore committed your own breach. The remedy for breach of a contract is either what is specified in the contract (liquidated damages clauses, etc.), or a breach of contract action in court. Self-help, which is what you apparently resorted to in this case, is not the proper avenue.
But hopefully it will work out okay for you. If they do sue you, like I said, you could counter-claim against them for breach of the original contract, and you could familiarize yourself with the concept of "laches" as a defense to their claims.
Just something to keep in mind for the future -- unless revoking the assignment was an express remedy in your written contract, you didn't have the authority under the contract to do so, and therefore committed your own breach. The remedy for breach of a contract is either what is specified in the contract (liquidated damages clauses, etc.), or a breach of contract action in court. Self-help, which is what you apparently resorted to in this case, is not the proper avenue.
But hopefully it will work out okay for you. If they do sue you, like I said, you could counter-claim against them for breach of the original contract, and you could familiarize yourself with the concept of "laches" as a defense to their claims.