The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
May 20th, 2019, 11:48am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Assignments and Licenses
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Quitclaim
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Quitclaim  (Read 8415 times)
Isaac
Senior Member
****




   


Posts: 3472
Re: Quitclaim
« Reply #5 on: Aug 31st, 2006, 11:45am »
Quote Quote Modify Modify

on Aug 31st, 2006, 11:30am, RL wrote:
Someone in a former business is preparing a Quit Claim for me to sign telling me it will free me from any further and potential liability or responsibility for IP that is owned by multiple shareholders from a company prior to the former; of

 
I find the idea that transferring the right would end your liability to be dubious at best unless the agreement also indicates indemnification by someone who could actually pay a judgment.
IP Logged

Isaac
Michael Arnold
Guest
Re: Quitclaim
« Reply #6 on: Aug 26th, 2007, 1:46pm »
Quote Quote Modify Modify Remove Remove

Have you found a solution to this? I am looking for something similar. I have a device I invented of my own volition. I have used it at my hospital, and am now marketing it through a national company. I need something signed by the hospital releasing any interest they may or may not actually have in my device.  I never signed an agreement with the hospital that would have given them claim to any intellectual property, but I have been advised to get something in writing from them to protect myself and prevent them pursuing anything in the future. -- Is there a way to merge the language of a quit-claim into an assignment contract?
IP Logged
rAkA
Guest
Re: Quitclaim
« Reply #7 on: Nov 27th, 2007, 10:31am »
Quote Quote Modify Modify Remove Remove

Bill,
 
Did you ever get an answer on this? I too have a situation where a quitclaim would function to obtain the end goal of foreclosing future action by someone who is currently acknowledging he is not an inventor.
 
Thanks for any further insight.
IP Logged
Kaitlin
Newbie
*




   


Posts: 39
Re: Quitclaim
« Reply #8 on: Nov 27th, 2007, 1:52pm »
Quote Quote Modify Modify

on Aug 26th, 2007, 1:46pm, Michael Arnold wrote:
Is there a way to merge the language of a quit-claim into an assignment contract?

Michael,
 
If your invention is of a value worth protecting, you would do well to have an attorney experienced in patent licensing check over your assignment with reference to your particular situation (including any other documents relating to your relationship with the hospital and any correspondence about the invention with the hospital).  There are many ways to trip up here, e.g., if the assignment doesn't deal appropriately with the question of ability to sue for past infringment and it turns out an infringement had begun before the assignment was executed.  (For quick background, see Brunsvold and O'Reilley, Drafting Patent License Agreements, 5th ed. Sections 1.02 and 1.03 dealing with transfer of rights and agreements to assign.)
 
As for the term "quitclaim", it can and has been used in the patent assignment context.  (See, e.g., Media Technologies Licensing, LLC v. Upper Deck Company, 334 F.3d 1366, 67 U.S.P.Q.2d 1374 (Fed. Cir. 2003)  ("On November 1, 2001, in his capacity as inventor of the '501 patent, Gluck executed a quitclaim deed assigning and transferring all his rights in the '501 patent to LNCJ, Ltd., for one thousand five hundred dollars and other good and valuable consideration.")  
 
There is a "quitclaim assignment" of potential patent rights by Diametrics Medical Inc. on file with the SEC at www dot secinfo dot com slash d14D5a dot v4Xef dot b dot htm .  And there are also a couple of websites puporting to sell drafts for accomplishing a quitclaim assignment of patent rights.  (Google "quitclaim assignment" to bring these up.)  
 
BEWARE, however.  Don't just go to those sites and try to draft your own assignment from them if you can at all afford proper legal counsel.  There are many ways to trip up and, moreover, there's no guarantee that, just because a large company has used certain language, the language used is the way to go.  Remember that every business thinks its contracts are great -- until they have to rely on them in court.  And big companies can mess this up just as well as small ones.  
« Last Edit: Nov 27th, 2007, 2:04pm by Kaitlin » IP Logged
CriterionD
Full Member
***




   
WWW Email

Posts: 202
Re: Quitclaim
« Reply #9 on: Nov 27th, 2007, 4:25pm »
Quote Quote Modify Modify

In terms of other potentially relevant case law, I can contribute the following - Link
IP Logged

www.criteriondynamics.com
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board