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   Author  Topic: Statue of limitations to file  (Read 643 times)
Matt T.
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Statue of limitations to file
« on: Sep 13th, 2006, 5:12pm »
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A company I used to work for (company A) filed my patent in July of 2004, and I assigned all rights to them.  The patent is now being licensed to a second company (company B)which I currently work for.  The problem, however, is that company A apparently never finished filing the patent, or didn't follow through with office actions, or something, because the application is not published even though it is greater than 2 years out.  It is possible we filed a "Do not publish" request, but that should have gone out the window when an international patent was filed in 2005, and published in late 2005.  Is it possible that the "Do not publish" request was never rescinded?
 
Secondly, if Company A dropped the ball on filing, do I have the right to file as an individual?  How long must I wait before I could file?
 
Third and finally, Company B is obviously upset with Company A, because Company A according to the contract between the two is supposed to perform all filing, office actions, and documentation requested by USPTO in a timely manner.  If the patent has been abandoned by Company A, company B should not being paying royalties or exclusivity to Company A, right?
 
Thanks for your insight!
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JimIvey
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Re: Statue of limitations to file
« Reply #1 on: Sep 13th, 2006, 6:51pm »
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on Sep 13th, 2006, 5:12pm, Matt T. wrote:
Is it possible that the "Do not publish" request was never rescinded?

Yes, it's possible.  The application would then be abandoned.
 
on Sep 13th, 2006, 5:12pm, Matt T. wrote:
Secondly, if Company A dropped the ball on filing, do I have the right to file as an individual?  How long must I wait before I could file?

Probably not, and no waiting period.  You would be able to file as an individual if you hadn't already assigned your rights and you were under no obligation to assign your rights or if somehow rights revert to you upon abandonment by Company A.  That's all pretty unlikely, and it's not enough.  The invention would have to have not been publicly disclosed, publicly used, or offered for sale more than one year from your filing date.  Since it's been licensed since about 2000, it seems very unlikely that it hasn't been publicized or commercialized in some way at least a year ago.
 
One possible option would be to somehow acquire the rights in the already filed application and try to revive it -- although revival for failing to notify re foreign filing might be really tough this late in the game.  
 
It may be possible for the international application to be filed in the US, so all might not be lost -- to you or to Company A.
 
on Sep 13th, 2006, 5:12pm, Matt T. wrote:
Third and finally, Company B is obviously upset with Company A, because Company A according to the contract between the two is supposed to perform all filing, office actions, and documentation requested by USPTO in a timely manner.  If the patent has been abandoned by Company A, company B should not being paying royalties or exclusivity to Company A, right?

I'll let somebody else answer that one.  My guess is that, if the licensee wants to stop paying royalties if and when the application is abandoned, the license contract should say so.  In other words, Company B would stop paying royalties when the contract says it would.  But I could be wrong.
 
Regards.
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