Intl BioChemical Industries Inc fka IBCL

[aktony]

JNelson on Raging Bull posted the following information (#10588)
indicating that transfers of patents from IBCL to Nova dated July 5, 2002, were transfered back to IBCL on Janury 27, 2003:

"On January 27, 2003 Nova Biogenetics, Inc. (hereinafter "Nova") sold and assigned to International Biochemical Industries, Inc. (hereinafter "IBCL") and Nova as joint assignees, Nova's entire right, title and interest to certain identifiable intellectual property as well as to applications therefrom and all patents and extensions thereof."


From what little I understand, the patents were granted to Elfersy, Berkner and Moses who then "assigned" or transferred the rights to IBCL. When they assigned the patents to IBCL, did they receive compensation or residual rights to the patents? The following material was gathered from a search of "patent right assignment" on Google.
http://www.lawnotes.com/patent/transfer.html

The owner of a patent or patent application can transfer it ("assign" it) by a written assignment document. The assignment document is roughly analogous to a deed transferring title to a house or other real property. [35 USC 261] (As CEO, Moses probably had the same right to transfer patents as he would have had to sell off or transfer company property without pre-announcement to the shareholders.)

In the same way, the owner can transfer an "undivided interest" in the patent or patent application (e.g., half-ownership) can also be assigned in the same way. [35 USC 261

(Apparently, the only recording necessary to transfer or assign a patent is to record it at the Patent and Trademark Office.)

Why Record an Assignment Document?
A: To put the public on notice of
the ownership transfer and prevent fraud.

If you buy (or otherwise acquire title to) a patent, you can record the title transfer, i.e., the assignment document, in the U.S. Patent and Trademark Office. Recording the assignment document puts the public on notice of your ownership. [35 USC 261, 37 CFR 3.11]

If at all possible, you should record your assignment document within three months after its date. If you do, you would be the owner of the patent even if the assignor unscrupulously tried to sell the patent again to someone else. [35 USC 261]

On the other hand, if you don't record your assignment, and a later buyer doesn't know about your purchase, then the later buyer probably would be the owner of the patent, not you, because you didn't take advantage of your right to put the public on notice of your ownership. [35 USC 261]

The same rules apply in recording assignments of patent applications. They apply not just to sales of patents, but to other types of title transfers such as assignments by employees to their employers.


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