Replies to post #162107 on Spongetech Delivery Systems, Inc. (fka SPNGQ)

[mackbryan1]

thanks for the clarification. much appreciated!!

[crashman]

the assignee has all the rights to the patent. H.H. Brown could have sold the rights to Dicon, then Dicon would be the assignee:

Assignments and Licenses

A patent is personal property and may be sold to others or mortgaged; it may be bequeathed by a will; and it may pass to the heirs of a deceased patentee. The patent law provides for the transfer or sale of a patent, or of an application for patent, by an instrument in writing. Such an instrument is referred to as an assignment and may transfer the entire interest in the patent. The assignee, when the patent is assigned to him or her, becomes the owner of the patent and has the same rights that the original patentee had.

The statute also provides for the assignment of a part interest, that is, a half interest, a fourth interest, etc., in a patent. There may also be a grant that conveys the same character of interest as an assignment but only for a particularly specified part of the United States. A mortgage of patent property passes ownership thereof to the mortgagee or lender until the mortgage has been satisfied and a retransfer from the mortgagee back to the mortgagor, the borrower, is made. A conditional assignment also passes ownership of the patent and is regarded as absolute until canceled by the parties or by the decree of a competent court.

An assignment, grant, or conveyance of any patent or application for patent should be acknowledged before a notary public or officer authorized to administer oaths or perform notarial acts. The certificate of such acknowledgment constitutes prima facie evidence of the execution of the assignment, grant, or conveyance.

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Recording of Assignments

The Office records assignments, grants, and similar instruments sent to it for recording, and the recording serves as notice. If an assignment, grant, or conveyance of a patent or an interest in a patent (or an application for patent) is not recorded in the Office within three months from its date, it is void against a subsequent purchaser for a valuable consideration without notice, unless it is recorded prior to the subsequent purchase.

An instrument relating to a patent should identify the patent by number and date (the name of the inventor and title of the invention as stated in the patent should also be given). An instrument relating to an application should identify the application by its application number and date of filing, the name of the inventor, and title of the invention as stated in the application should also be given. Sometimes an assignment of an application is executed at the same time that the application is prepared and before it has been filed in the Office. Such assignment should adequately identify the application, as by its date of execution and name of the inventor and title of the invention, so that there can be no mistake as to the application intended. If an application has been assigned and the assignment is recorded, on or before the date the issue fee is paid, the patent will be issued to the assignee as owner. If the assignment is of a part interest only, the patent will be issued to the inventor and assignee as joint owners.

http://www.uspto.gov/go/pac/doc/general/#assignments

[printmail01]

If you review the 8K SPNG filed RE: The DICON buyout you will notice the following: It appears HH Brown controls the patent....

This is from the 8K:

3.2 Deliveries by the Company and the Sellers. On the Closing Date, the Company and the Sellers shall deliver, or cause to be delivered, the following:

(f) An acknowledgement from H.H. Brown Shoe Technologies, LLC (“H.H. Brown”) to the sale of the Membership Interests to the Purchaser, and an acknowledgement and confirmation from H.H. Brown that the Intellectual Property License Agreement effective November 30, 2007 by and between H.H. Brown and the Company (the “H.H. Brown License Agreement”) remains in force and effect as of the Closing Date, and that as of the Closing Date, the Company is not in breach of any of its material obligations under the H. H. Brown License Agreement.
_______

4.6 No Company Defaults or Consents. Neither the execution and delivery of this Agreement nor the carrying out of any of the transactions contemplated hereby will:

b) violate, conflict with or constitute a default under the terms, conditions or provisions of the H.H. Brown License Agreement;
__________

(b) Except as otherwise set forth on Schedule 4.10(b) attached hereto, since the Balance Sheet date, the Company has not done any of the following:
(xii) been notified on any default under the H.H. Brown License Agreement;
__________

http://www.sec.gov/Archives/edgar/data/1201251/000114420409037511/v154860_ex10-1.htm

[rdailey4]

OT, I don't think that is right. If I remember, the inventor and the guy from H.H. Brown turned over the patent to Dicon. Therefore, when SPNG bought Dicon, they bought the patent.