As part of my contract with an overseas company, I had handed over all rights to the IP for a technology I am the sole inventor of.
However, I believe they are in violation of the contract e.g. withholding pay, being an obstacle/hindrance (albeit unintentionally) preventing me from successfully fulfilling my duties & my end of the deal, to unscrupulous/shrewd/ill conceived contract, or more broadly how the company/deal is structured.
Q's:
a) If their violation can be proven, could that be considered grounds to win back the IP?
b) What if the owner of this company "silently" (i.e. without the knowledge, consent, agreement or acceptance of the actual inventor) adds himself to the patent app as a "co-inventor" while not having made any contribution to it?
Sorry I'm now in Manhattan (NY)
1) likely you just have a breach of contract claim, at most, not a reason for rescission and return of IP.
2) adding a non-inventor to a patent app as joint inventor is fraudulent and can invalidate the patent. If you handed over all rights, it is hard to see how this damages you unless your compensation is dependent on the status of the patent (e.g. if you get royalties). The normal thing to do when that occurs is to send a letter to the attorney of record on the application informing him that the company owner is not an inventor and demanding that name be removed and notifying the attorney that you will inform the USPTO if it is not corrected. The attorney , thus informed, has a duty of candor to the the USPTO that should force the attorney to inquire as to inventorship and to change it if it is incorrect, failing which the patent will likely be unenforceable and that attorney will risk disciplinary action.
Your patent attorney can assist regarding a non-inventor showing as an inventor. The Director of the
Patent and Trademark Office is empowered to correct issues of inventorship.
The remaining matters are contract in nature. Your general litigation counsel will be best to advise.
You certainly have a contract dispute on your hands. The answers to your questions could be in the remedies that you seek in court. You could seek recision of the entire contract which may lead to a reassignment of the IP to you. This all depends on what your attorney does in court. Please understand that everything you are proposing will likely not get done in a simple letter, but will likely require the filing of a lawsuit to enforce the provisions of the contract.
