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Author Topic: Intentionally filed unauthorized patent assignments - how to clear the record?  (Read 442 times)

techpreneur

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The question relates to remedies a patentee might have for clearing the public assignment and prosecution records for its patent assets from unauthorized postings by a 3rd party who, in making the invalid assignment and inappropriate prosecution record postings, sought to mislead the USPTO.

Here’s what happened (in below, ‘Co’ stands for corporation):
0.   Co A’s shareholders resolve to re-incorporate the business in different jurisdiction as Co B and transfer A’s patent holdings to B. (B is to have similar shareholding structure as A, but with administration that is responsive to its shareholders). A’s admiration obstructs its shareholders’, and later, its directors’ decisions.
1.   Despite the administrative obstruction at A, B is incorporated and A’s patent assets are assigned to its successor B. (A and B are affiliates, as they have the same majority shareholder). These patent assignments from A to B are notarized.
2.   A well known 3rd party Co X makes a written offer to purchase the patents from the Co B, but B will not sell.
3.   A few weeks later from the latest purchase offer by X, and less than a year from the notarization, the assignment from A to B is corrected (for certain unintentional mistakes in the notarized assignments), with the effective date of the corrected assignment kept as its notarized date. The corrected assignment from A to B, along with original notarized assignment, is recorded with the USPTO on the date of the correction. The USPTO grants the notarization date as the official ‘execution date’ for the recorded assignment to B.
4.   Some days after the recordation of the assignment between the related Co:s A to B, an assignment, purportedly from Co A, to a secretive 3rd party Co Y, is recorded, and it is dated so as if it was signed a few days before the recordation of the assignment from A to B, but after the effective date of the recorded corrected assignment to B (which effective date is the notarization date of the initial assignment to B). The assignor-signature on the assignment from A to Y is by an individual who does not have A’s (or B’s) authorization to transact on A’s (or B’s) assets, or sign any documents on A’s (or B’s) behalf. This individual is affiliated with the non-lawful administration at A that had obstructed A’s shareholders’ and directors’ resolutions to transfer the business and its assets to B.
5.   Y has refused collaboration with B to remove the unauthorized and invalid purported assignment of B’s assets from A to Y.
6.   Y makes, without gaining a Power of Attorney for B’s patent assets, several prosecution record postings on B’s patent cases, seeking to challenge B’s ownership of its patent assets, using 35 USC 261 as the pretext, citing the paragraph “An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” The shell Co Y however, much later on, turns out to be a subsidiary of X, the party that had some weeks before their recording of the patents from A to Y offered to buy the same patent assets from B, so in deed both Y and X had the notice meant by the section of the law that they cited to the USPTO as the basis for why their assignments and PoAs should be considered valid (and assignments to B and B's PoAs invalid).
7.   USPTO (like the foreign patent offices in corresponding cases) grant the prosecution control of the patent assets to B, and the USPTO in writing prohibits further PoA requests by Y -- and though prosecution postings without PoA are in any case against the Office rules (MPEP s. 1134: "The Office considers inappropriate any third-party inquiry, or submission in an application that is not provided for in 37 CFR 1.290 or 37 CFR 1.291.") -- X keeps filing prosecution statements (e.g. changes of small entity status) and further assignments to their other subsidiaries on B’s patent records.
8.     USPTO will not expunge the invalid assignments to X's subsidiaries, and the prosecution records of B's patents are in any case complicated due the confusing postings by X's subsidiaries.

Given that X has sought to mislead the USPTO (a federal agency) and the public via their wrongful assignment and prosecution record postings on B’s (publicly visible) patent records, might B get any assistance from the Dept of Justice / DA to restore clean assignment and prosecution records for its patents?

How might the gov’t be approached for such a request for relief?

Naturally, X is a large corporation, while B is (like A was) a small one that cannot raise funds for a civil action, in particular due to the confusing assignment and prosecution record postings by X on B's patents. There are corporate investors in X that seem to infringe B’s patents.
« Last Edit: 06-30-18 at 04:22 am by techpreneur »
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lazyexaminer

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MPEP 323.01(c)-(d) is a place to start. And of course 18 USC 1001 may be implicated. If so the DOJ could get involved. No idea if that is likely or how to bring it to their attention, so this is really just a minor half step that maybe others can elaborate on.
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I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

techpreneur

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MPEP 323.01(c)-(d) is a place to start. And of course 18 USC 1001 may be implicated. If so the DOJ could get involved. No idea if that is likely or how to bring it to their attention, so this is really just a minor half step that maybe others can elaborate on.

Thank you -- MPEP 323.01(c) procedures have been implemented, but the USPTO considered these measures, along with their published decision granting the prosecution control to B (instead of Y/X), sufficient, and has not expunged the confusing assignments to Y, despite the petition per MPEP 323.01(d).

Edit: Note however that the mentioned USPTO decision in favor of B was published on the prosecution records of only those cases that were pending applications at the time of the Office decision on ownership for prosecution control purposes. The patents that appear to be most widely infringed however were already issued at the time of these decisions, and their prosecution records (lacking the Office decisions) display (as post issuance prosecution statements) only the inappropriate postings by X's subsidiaries (i.e. by Y and its successor entities), seeking to show Y (or its successors) as the owner of these patents that are adopted into a number of widely used standards etc.
« Last Edit: 06-21-18 at 11:51 am by techpreneur »
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EvilLost

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I'm slightly confused here....if the USPTO found in favor of B, and all rights were directed to B, then what is the problem?

A civil suit may be warranted to recover any losses (e.g. legal fees, etc), but other than that, where are your losses?

I can see an argument that the confusing record may lower the value of these patents (e.g. by increase the litigation risk), but other than that, you seem to be in the clear.
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techpreneur

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The practical problems for B include:
- It has been impossible for B to raise capital; potential investors would require any potential ownership dispute to be resolved before they'd invest, and B does not have the funds to pursue a court decision on the ownership of patent assets.
- The apparent infringers of B's patents will not license B's patents (on the specious grounds that they would not be certain if B actually owns the patents they are using via several standards). These corporations, some of whom are investors in X, are saving $100Ms in what would be the reasonable royalties by getting to use B's patents for free, thanks to the sabotage done by Y/X.
- Again, B cannot currently afford legal action to enforce its patents, to get the court assessed royalties (or settlements with the apparent infringers).

That's why B would need public sector intervention to clear its patent ownership and prosecution records, based on that Y/X have defrauded a federal agency in making their inappropriate postings on B's patent assignment and prosecution records.
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EvilLost

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OK, now I understand the problem.

As I see it, there are at least 2 distinct issues here:
1) Criminal proceedings against X/Y for intentional fraud on the USPTO. B could report this action to an appropriate agency (as with any crime) but even if this were successful, I don't see why it would say or do anything as to the assignments and/or civil issue.

2) Civil proceedings against X/Y by B. Various accusations for intentional interference with contractual matters and related claims could be brought up. A court order clearing the record could be established if a quit claim was not obtained from X/Y.

As to the "not enough funds" problem....that is B's problem. I don't see why you are expecting a govt agency to handle a civil matter. That said , if the facts are as favorable as you present them, B could probably find an attorney who would be willing to take this case on contingency or some hybrid fee structure.
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techpreneur

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Yes, it is B's problem that it lacks the funds, but the reasons for this state of affairs include the fraudulent assignments and prosecution postings on its patent records -- i.e. illegal actions against gov't agency.

In any case, how would such illegal acts be reported to the gov't, in practice? Thanks for any guidance.
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