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Ask Alex Reese Your Own Question
Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3466
Experience:  Experienced in intellectual property law
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How do I protect my Patent and TM from being lined if I am

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How do I protect my Patent and TM from being lined if I am the assignee and not my Corporation and I have creditors? What options to I have to protect my IP from creditors? I have not sold the IP or licensed it to anyone yet. What is the safest way to protect this so I can sell it if I want and not have it lined.

Alex Reese :

hello

Alex Reese :

what do you mean by "lined"?

Customer:

not lined. leaned. A group of people have tried to steal this Patent from me and did not succeed. My fear is that they will try to lean my Patent and TM and make it hard for me to sell it. Can they do that?

Alex Reese :

Unfortunately, if it is your personal property then it may be subject to a lien, but a court would likely not allow a lien against the patent/TM if there was other property that could be more properly subject to the lien. If it was property of the Corp. (i.e. assigned to the Corp.) then a lien against you personally would not expose the patent/TM (they would be protected).

Customer:

I assigned it to my first Corporation and when I saw it was being stolen I assigned the transfer back to myself and revoked the POA. This was before the Patent was Issued in Nov and DEC. Then I disolved the Corporation. It recorded with the Cal Sec of State on Jan 10,2013.

Alex Reese :

I see. FYI the patent can be assigned before the patent issues.

Customer:

Then on Feb 22, 2013 they tried to assign my old Corporation to a new one. Then on Feb 28, they tried to assign my dissolved Corporation to another Corporation. Then on March 1,2013 the POA that I revoked tried to come back on as the POA to the Patent with a new Corporation. I revoked him as POA as the Assignee and I have a lawyer at the USPTO OED investigating this Registered Patent and TM lawyer. This group is who will try and do something. but it appears as though I might be safe with keeping the PAtent and TM in my name only. It has been assigned to me and the lawyer was revoked and recorded with the USPTO on May 24 and May 31 because I faxed in the revocation twice. I do not have any personal assets except this Patent and TM future possibilities.

Alex Reese :

It is likely safer in your name because it is unlikely that a creditor would know about or have an interest in putting a lien on IP rights, but if you really have no other personal assets then it could be at risk in the event of a creditor seeking a lien.

Alex Reese :

so it may be risky to keep it in your name unless you (1) expect to gain some assets or (2) don't except to have creditors / will be fixing your credit issues

Customer:

What happens if I sell the Patent to someone else, is it subject to a lien after it is under new ownership? Woud it be safer if I assign it to my new Corporation that I set up this Jan.? By the way when I owned my dissolved Corporation I did not issue any stock. These creditors fell under the "family and friends' category and there was not any stock issued stamped. I plan on having this product gain some assets in the near future.

Alex Reese :

If you sold the patent then it would no longer be subject to a lien by your creditors.

Customer:

Do you think they will stop the success if they try and lien it? Or do you think they have to wait until I get significant sales and then try and go after me. I do not have a problem repaying everyone but I first had to get this Patent and Tm in my name so I could do something with it.

Alex Reese :

One benefit of assigning it to your Corp. is that the Corp. assets are protected from your personal creditors.

Customer:

So do I wait until I receive the original certificate and Grant and then do the transfer?

Customer:

Should I send in the assignment before I receive the Certificate and Grant? Or will this hold up the paperwork at the USPTO? How does that work? I already asked for a copy and received it a few days ago. it shows me as the assignee and inventor.

Alex Reese :

you do not need to wait for the original cert. & grant

Alex Reese :

(it will not hold things up)

Customer:

So if I transfer an assignment to my Corporation it will be protected against creditors coming after me personally for the personal debt that I have with them and the Patent and TM will be protected against a lien.

Alex Reese :

that's right, and I would recommend that

Customer:

Sounds like I got my answer! Definitely will do that! Thank you very much!!!

Alex Reese :

sure, best of luck!

Customer:

You rock!!!

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