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Dimitry K., Esq.
Dimitry K., Esq., Attorney
Category: Legal
Satisfied Customers: 41220
Experience:  Multiple jurisdictions, specialize in business/contract disputes, estate creation and administration.
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I filed patent application some time ago. Now I want to

Customer Question

I filed patent application some time ago. Now I want to share all benefits that would come from this patent with my partner 50/50 including any possible income coming from using and/or selling this patent.
What legal form should I use to certify my intent in front of notary?
Submitted: 1 year ago.
Category: Legal
Expert:  Dimitry K., Esq. replied 1 year ago.

Thank you for your question. Please permit me to assist you with your concerns.

Just to be clear, you filed this form initially with the USPTO? Or was this a private agreement?

Customer: replied 1 year ago.
I did not fill any form for my partner yet except patent filling with USPTO. I am kindly asking you which form would I fill.
Expert:  Dimitry K., Esq. replied 1 year ago.

Hi,

Sure thing, please allow me just a few moments to look it up.

Customer: replied 1 year ago.
Take your time. Thanks
Expert:  Dimitry K., Esq. replied 1 year ago.

Hi,

What you need to use is form PTO-1595 Patents to file for an 'assignment' under which you assign part of your rights to a third party. Based on the fee schedule it appears you need to provide them with payment of $40 for the filing:

Fees: http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule

Form is here: http://www.uspto.gov/patent/patents-forms

Process of assignment is explained here: http://www.uspto.gov/learning-and-resources/transferring-ownership-assignments-faqs

Hope that helps!

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.
I cannot fill anything with USPTO for my partner as he cannot be listed on this patent. I was asking for legal form to use between private parties: me and him. A 50/50 partnership for all gains from the patent. Please advise.
Expert:  Dimitry K., Esq. replied 1 year ago.

Hi,

There is no legal form--that is a private contract (and why I asked if you meant to file with the USPTO or privately). What you are describing is a private agreement of ownership, and a private assignment--and there is no form for that. You would need to draft it, or retain an IP attorney to draft it for you.

Sincerely,

Dimitry, Esq.

Customer: replied 1 year ago.
Can you draft it and how much it would cost? Please advise.
Expert:  Dimitry K., Esq. replied 1 year ago.

Hello,

While I can help with the language, please be advised that while I can help with a template, I am not and cannot act as your attorney in this matter. I can forward you an additional service request, but this is a fairly expensive document because multiple factors have to be drafted and placed within the document for it to provide proper protection. I will send you a request, and please let me know if it is acceptable. If it is, I would need to obtain some more information in private, and likely by Wednesday or Thursday I will have a viable agreement created for you.

Customer: replied 1 year ago.
Let me think about it and get back to you tomorrow.
Expert:  Dimitry K., Esq. replied 1 year ago.

Sure thing, I understand!

Customer: replied 1 year ago.
It is little hard for me to believe there is no way to draft simple napkin statement about equal share for the patent application benefits, profits including its use and sale. And that it requires $500 worth partnership agreement.
If you cannot advise further for simplified version I would like to receive refund for service. Regards
Expert:  Dimitry K., Esq. replied 1 year ago.
Please take care. I have requested a refund on your behalf.
Fact is, this is not a simple contract, and if it were, I would have priced it accordingly. This is an agreement that any intellectual property attorney would quote you from between $3,000 to $5,000, and not simply because they can...figuring out interest, licensing, obligations, past, present, and future shares is not often easy. But you are absolutely free to shop around or find someone else to try to assist you going forward.
Sincerely,
Dimitry, Esq.