Transfer of Patent Ownership

[e28champ]

What is the name of your state (only U.S. law)? Colorado

I would like to transfer the ownership of one of my patents to my two daughters. They are around 30 yrs old. I am preparing to file a civil suit against one or more companies for infringement and if all goes well, the damages and or royalties can be paid to them as the new owners of the patent.

My questions are: Can I still present the case to the court as the inventor not being the current owner of the patent?

Should I wait a certain length of time after the transfer to file the suit?

If we happen to lose the case, could the defendent(s) come back and sue me or my daughters for their litigation costs?

 

[divgradcurl]

My questions are: Can I still present the case to the court as the inventor not being the current owner of the patent?

No. You would need to join the current owner. If you do not currently own the patent when the lawsuit is filed, the case can be thrown out for lack of standing to sue. The inventor is irrelevant -- only the current assignee can enforce a patent.

EDIT: Further, if the assignment includes the right to sue for past infringement (see below), then you can't sue at all, because you retain no rights that can be enforced. If you do not transfer the right to sue for past infringement, then you can join the current assignee and you will both be plaintiffs.

Should I wait a certain length of time after the transfer to file the suit?

See above.

If we happen to lose the case, could the defendent(s) come back and sue me or my daughters for their litigation costs?

Typically no, but there are situations where the plaintiff could be liable for the litigation costs of the other side -- but it is unusual.

Also, assignment of ownership of patent rights does NOT transfer the right to sue for infringement that occured prior to the assignment UNLESS the assignment explicitly also transfers the right to sue for past infringement. This is not automatic -- it must be an explicit transfer.