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I own a granted UPSTO Patent, that I have passed the rights

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I own a granted UPSTO...

I own a granted UPSTO Patent, that I have passed the rights to another lawfirm restricting my from using my patent. It has been 10 years and I am coming up to my 9 year Patent Maintenance Fee. I do not want to pay it and essentially Abandon my Patent. Can Business Firm that has been funding its so-called development, for which they have suspended funding of the Engineering principles, cause me any grief if I "Abandon" it. I do not have the funds anymore to keep this going but have legal contracts that I worry could come back to bite me? Very Sad... But if their is no Patent once I abandon it, and it is in the Public Domain. Can I not pursue it on my own? Thank You, ***** *****: What's the invention's purpose? Customer: It is a portable Air and Medical Device worn on the wrist: Patent No: ***************.
JA: Have you talked to a local attorney? Has anything been filed in court?
Customer: No yet.
JA: Anything else you want the lawyer to know before I connect you?
Customer: I would like to send the document from the UK, which I never signed a document with Content. Only a serious of Documents later that they pasted my signature too. Very Odd, I thought. The document I am most interested in is the assignment of my Patent to a third party lawfirm that seems to hold all rights to it. But again, if I let it expire after 11 years, do they have any issues with me, since the Patent will be defunct?

Submitted: 12 days ago.Category: Legal
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Answered in 34 minutes by:
12/4/2017
Lawyer: Bill Attorney, Lawyer replied 12 days ago
Bill Attorney
Category: Legal
Satisfied Customers: 1,492
Experience: Attorney
Verified

Dear Customer ,

Thank You for posting your patent law question today. I'm attorney Bill assisting you with your legal question today. To transfer a patent to that party so that they are responsible for further registrations you need to submit an assignment of ownership with the USPTO.

37 CFR 3.1

"a transfer by a party of all or part of its right, title and interest in a patent [or] patent application"

This is done through the Electronic Patent Assignment System

https://epas.uspto.gov/

Because your transfer wasn't previously assigned you are responsible for the continued registration per your contractual agreement.

Your liability to register should be specified in your contract,which you can send into me for a review as an extra service.

Failure to subsequently register when you haven't assigned your patent will result in abandonment of your patent; your abandonment while allowable may be breach of your contract with the business firm, so you need to closely compare your contract.

We are here to help.

Please follow up with me as required.

In return remember to rate positively today.

You do this by rating 5*****, 4**** or better.

So I hope you rate FIVE STARS before your exit today.

Thank You

Attorney Bill

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Customer reply replied 12 days ago

Hi Bill, and Thank You for the responsive reply... I will upload the document in question. It seems so open ended, it is worrisome!!! Breaches have occurred on both sides and I could file against them, but I want to avoid litigation. It COST's TOO MUCH !!! Anyway my friend, I will give you the document. The real issue is there is no specific requirement to maintain my "Maintenance Fee's" in in any verbal statements. I do not have the funds to do so, but worry that they will then pursue a lawsuit for which I would have to file a BK to protect my home and assists. And in the U.S. that varies from state to state. But I am not wealthy so, the courts would essentially protect me, should they attempt any such effort. Still - do they even have cause, given that they have suspended a verbal agreement with myself to fund 1K USD per mo., including for the last 4 months have failed to fund the project to my CEO and others. They are in a legal breach, one can easily argue. Thus have defaulted on their original agreements. Since they are not meeting their obligations, I consider them by default in full breach on any contracts they believe we have. So the Game begins... Any helpful thoughts...! Thanks, Russ ******

Lawyer: Bill Attorney, Lawyer replied 12 days ago

Dear Russ

Yes your dispute with the company is contractual; I could review your contract but is an extra service to the question and answer service.

You could agree to terminate the contract, negotiate an amendment, or seek declaratory relief in a court for rescission due to multiple breaches by the other party.

Other remedies include specific performance or damages for breach of contract.

You are both liable for damages for breach so rescission of contract is something you might want to negotiate on.

remember to rate positively today.

You do this by rating 5*****, 4**** or better.

So I hope you rate FIVE STARS before your exit today.

Thank You

Attorney Bill

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Customer reply replied 10 days ago

I have been charged my 59 dollars for the phone call and send files. But I have never received a Call Yet! Please Assist. Thank You, Russ *******

Customer reply replied 10 days ago

I would like to speak with you - Bill... At your convenience. However, I did try this process 2 days ago, but never received a call: My phone number is: ************** I will be sending the primary document involved. I am in a contract with a company overseas, who I believe has "Hoodwinked" me!!! They have split into two companies without my understanding, and may have tried to cut me out of my original agreement to give my USPTO Patent for use to them. They now say, that I am now part of a company 1 or the 2 that does not give me full product rights to all products, only mine. I also signed my name to documents without any text. And have never seen a document with my signature, but they believe I have signed my rights away to my USPTO Patent, except for a minor Royality and I should have 5% of the total company dividends or earnings. However the company has now breached a monthly 1k USD payment to me, authorized years ago by the Directors of this company "SWL" (********* Worldwide LTD). They also are no longer funding my Engineers their salaires, since June of 2017. The Breaches, in my perspective are implicit and prima-facie. So how much will it cost me to file for recension of the Contract, due to the fact that they will not acknowledge their obligations to fund this project to go to market. SECOND and Perhaps most important me is in 2018, I owe my final Patent Maintenance Fee of $3,500 to the USPTO, or it will stand Abandon. Question, do I have any obligation to notify this new consolidated company (**********) law firm, not the Engineering company I hired to do the work on refinements and contact new sales, about the fact that this Patent, that I have no money to support any further, I will be letting go of, through non-payment of my USPTO Maintenance Fees. This will terminate obviously the Patent and it will become Public Domain. If they do not re-instate their payments to my Engineers and myself, then I want to Abandon the Patent. Can they sue me in any manner. When I started this project, I formed an LLC in California, but dissolved it around 2010 or 11 when the Corporation in the UK took it on. Could they possibly sue me, and then I would have to file a BK for protection, if I Abandon the Patent? I am not wealthy and now live with my wife essentially on Social Security. I have a reverse mortgage, and what to protect my home environment. There in nothing in the document that they say I signed that specifically speaks to Abandonment of the Patent. But I have worries that between the lines of their business contract they may argue as such. If they do not re-instate their funding and seem to continue on this course of waiting 5 years to acquire my patent if we do not go to market, then I am in a fraudulent Catch22, perhaps...? I need your advice. Can I simply let a patent that I paid $38,000 USD for which breaks my heart, go, and be free of any repercustions from this company (Lawfirm). They never asked the duration of the patent which would normally expire in Jan of 2027. Would I have any liabilities? And can a BK protect my Home? Or should I re-establish my LCC and then Abandon the Patent? I am sick, as the world is clamoring for this product, but these middle-men (lawfirm) have no idea? They claim that they have spent 2.5 million pounds on this project. My engineering firm, confirms that only 1.8 in on legal record as being spent. I spent nearly 200K, in the US, before I should out these investors. Please review the document and if you would call ************, my name is ***** ***** talk... Thanks, ***** ***** am in a hell, can't sleep and am worried... But if the law protects me, then I am out of this mess with letting the patent go into the Abandon heap!!! Thanks again, Russ

Customer reply replied 10 days ago

Hi Bill, I hope we can talk tmr 12/6/2017. ************* Thanks, Russ

Lawyer: Bill Attorney, Lawyer replied 10 days ago

Thank You for your follow up.

I believe another expert accepted your call request; the review of your contract and license agreement is an extra service.

You will need to accept premium service review by opening a new thread and putting the question for attorney Bill.

I will be happy to assist you.

In relation to my previous answer

In return remember to rate positively today.

You do this by rating 5*****, 4**** or better.

So I hope you rate FIVE STARS before your exit today.

Thank You

Attorney Bill

Ask Your Own Legal Question
Customer reply replied 9 days ago
Please notify me of what day you will call... Thank You. If you have not received my upload of Licence Execution Docx. Please advise how to resend... Thank You again, RUss
Customer reply replied 9 days ago
Dated 2015
RUSSELL WOLFE OTTER
and
SALVARE IP LIMITED
PATENT LICENCE AGREEMENT
Table Of Contents
1. INTERPRETATION 3
2. GRANT 5
3. PROVISION OF FURTHER KNOW-HOW 5
4. PROVISION OF TECHNICAL ASSISTANCE 6
5. QUALITY CONTROL AND MARKING 6
6. MARKETING 7
7. IMPROVEMENTS 7
8. CONFIDENTIALITY 7
9. RECORDAL OF LICENCE 8
10. ROYALTY 8
11. PROTECTION OF THE Patents AND Licensed Know-how 10
12. LIABILITY, INDEMNITY AND INSURANCE 12
13. ADDITIONAL OBLIGATIONS OF THE LICENSEE 13
14. SUB-LICENSING 14
15. SUB-CONTRACTING 15
16. ASSIGNMENT AND OTHER DEALINGS 15
17. DURATION AND TERMINATION 15
18. EFFECT OF TERMINATION 17
19. FURTHER ASSURANCE 17
20. WAIVER 18
21. ENTIRE AGREEMENT 18
22. VARIATION 18
23. SEVERANCE 18
24. COUNTERPARTS 18
25. THIRD PARTY RIGHTS 18
26. NO PARTNERSHIP OR AGENCY 19
27. FORCE MAJEURE 19
28. NOTICE 19
29. INADEQUACY OF DAMAGES 20
30. GOVERNING LAW 20
Schedule 1 Patents 21
This License is dated 2015.
BETWEEN
(1) RUSSELL WOLFE OTTER of 82612 Sky View Lane, Indio, California, 92201, United States of America (the "Licensor"); and
(2) SALVARE IP LIMITED incorporated and registered in Cyprus with company number 328833 whose registered office is at P O Box 45259, 86 Spyrou Kyprianou Avenue, Larnaca 6500, Cyprus (the "Licensee").
RECITALS
The Licensor has agreed to grant and the Licensee has agreed to take a licence of certain patent rights and know-how relating to marine safety products on the terms set out in this Agreement.
IT IS HEREBY AGREED
1. INTERPRETATION
1.1 The definitions and rules of interpretation in this clause 1 apply in this Agreement.
"Business Day": a day other than a Saturday, Sunday or public holiday in England when banks in the City of London are open for business.
"Effective Date": the date of this Agreement.
"Group": in relation to a company, that company, each and any subsidiary or holding company from time to time of that company, and any subsidiary from time to time of a holding company of that company.
"Improvement": any improvement, enhancement or modification to the technology that is the subject of the Patents or the Licensed Know-how or to any Licensed Product or its method of manufacture.
"Licensed Know-how": that non-patented practical information, resulting from experience and testing which is secret, substantial and identified relating to the Licensed Products.
"Licensed Products": NOAH (Non-umbilically connected Oxygen Armband Housing) and any other articles falling within the scope of any of the claims of any of the Patents.
"Net Sales Price": the actual invoiced price in an arm's length transaction, less, to the extent identified on the invoice, any costs of packing, insurance, transport, delivery, VAT and any other government taxes, duties or levies, and trade discounts and other allowances granted, provided that where the Licensed Products are
(a) let, leased or sold on hire purchase or supplied other than in an arm's length transaction
(b) sold or otherwise supplied to any Group company of the Licensee
(c) incorporated in another article and sold or otherwise supplied at a price which is included in the price of the other article
(d) put into use by the Licensee
the Net Sales Price of each such Licensed Product shall be deemed to be the Net Sales Price which would have been applied under this Agreement, had such Licensed Product been transferred to an independent arm's-length customer.
"Patents": the patents, short particulars of which are set out in the Schedule and any patents and patent applications that may be notified in writing by the Licensor to the Licensee from time to time."Quarterly Periods": the three-month periods commencing on 1 January, 1 April, 1 July and 1 October respectively.
"Subsidiary and Holding Company": mean a "subsidiary" and "holding company" as defined in section 1159 of the Companies Act 2006 and a company shall be treated, for the purposes only of the membership requirement contained in subsections 1159(1)(b) and (c) as a member of another company even if its shares in that other company are registered in the name of (a) another person (or its nominee), whether by way of security or in connection with the taking of security, or (b) its nominee. In the case of a limited liability partnership which is a subsidiary of a company or another limited liability partnership, section 1159 of the Companies Act 2006 shall be amended so that:
(a) references in sub sections 1159(1)(a) and (c) to voting rights are to the members' rights to vote on all or substantially all matters which are decided by a vote of the members of the limited liability partnership; and
(b) the reference in section 1159(1)(b) to the right to appoint or remove a majority of its board of directors is to the right to appoint or remove members holding a majority of the voting rights.
"Territory": Worldwide.
"VAT": value added tax imposed in any member state o
Customer reply replied 9 days ago

Please have someone call me... I have agreed to the Phone Call fee. This is my second attempt and you only need to review the "Salvare IP RWO Licence Execution Verison 08.15 to JustAnswer.doc document. Please email me at **************** or call me at ************. I have been trying for days to have this reviewed. Please Help or Advise. Thank You, Russ *******

Lawyer: Attorney2, Attorney replied 9 days ago
Attorney2
Attorney2, Attorney
Category: Legal
Satisfied Customers: 7,547
Experience: 29 Years In General Practice,
Verified

I am a different Attorney and I do not see a telephone call being requested and accepted. I am happy to continue in this format.

If you were charged for a phone call that you never received please contact customer service. The Attorneys on the site have no access to customer account information nor do we handle payments. US / Canada 1-***-***-****

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Customer reply replied 8 days ago
Please inform me if I can expect a call today (thur) or please no later than Friday. Thank You.
Lawyer: Attorney2, Attorney replied 8 days ago

As I stated the Attorneys do not have access to customer account information nor do we handle payments. You will need to contact Customer Service at US / Canada 1-***-***-****.

I can work with you in this format in the meantime.

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Customer reply replied 7 days ago

My name is Russ ******* I have been trying for a week to receive a phone call for 59 dollars. I have uploaded the most important document: "Salvare Licence Execution", but no one ever calls me. Please advise... I need to speak to someone today.

Lawyer: Attorney2, Attorney replied 7 days ago

My apologies, however, no telephone call request is showing up. Please contact customer service so they can assist you at 1-***-***-****.

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Customer reply replied 7 days ago

I would like to speak with you - Bill... At your convenience. However, I did try this process 2 days ago, but never received a call: My phone number is: ********** I will be sending the primary document involved. I am in a contract with a company overseas, who I believe has "Hoodwinked" me!!! They have split into two companies without my understanding, and may have tried to cut me out of my original agreement to give my USPTO Patent for use to them. They now say, that I am now part of a company 1 or the 2 that does not give me full product rights to all products, only mine. I also signed my name to documents without any text. And have never seen a document with my signature, but they believe I have signed my rights away to my USPTO Patent, except for a minor Royality and I should have 5% of the total company dividends or earnings. However the company has now breached a monthly 1k USD payment to me, authorized years ago by the Directors of this company "SWL" (Salvare Worldwide LTD). They also are no longer funding my Engineers their salaires, since June of 2017. The Breaches, in my perspective are implicit and prima-facie. So how much will it cost me to file for recension of the Contract, due to the fact that they will not acknowledge their obligations to fund this project to go to market. SECOND and Perhaps most important me is in 2018, I owe my final Patent Maintenance Fee of $3,500 to the USPTO, or it will stand Abandon. Question, do I have any obligation to notify this new consolidated company (lawfords.com) law firm, not the Engineering company I hired to do the work on refinements and contact new sales, about the fact that this Patent, that I have no money to support any further, I will be letting go of, through non-payment of my USPTO Maintenance Fees. This will terminate obviously the Patent and it will become Public Domain. If they do not re-instate their payments to my Engineers and myself, then I want to Abandon the Patent. Can they sue me in any manner. When I started this project, I formed an LLC in California, but dissolved it around 2010 or 11 when the Corporation in the UK took it on. Could they possibly sue me, and then I would have to file a BK for protection, if I Abandon the Patent? I am not wealthy and now live with my wife essentially on Social Security. I have a reverse mortgage, and what to protect my home environment. There in nothing in the document that they say I signed that specifically speaks to Abandonment of the Patent. But I have worries that between the lines of their business contract they may argue as such. If they do not re-instate their funding and seem to continue on this course of waiting 5 years to acquire my patent if we do not go to market, then I am in a fraudulent Catch22, perhaps...? I need your advice. Can I simply let a patent that I paid $38,000 USD for which breaks my heart, go, and be free of any repercustions from this company (Lawfirm). They never asked the duration of the patent which would normally expire in Jan of 2027. Would I have any liabilities? And can a BK protect my Home? Or should I re-establish my LCC and then Abandon the Patent? I am sick, as the world is clamoring for this product, but these middle-men (lawfirm) have no idea? They claim that they have spent 2.5 million pounds on this project. My engineering firm, confirms that only 1.8 in on legal record as being spent. I spent nearly 200K, in the US, before I should out these investors. Please review the document and if you would call ***************, my name is ***** ***** talk... Thanks, ***** ***** am in a hell, can't sleep and am worried... But if the law protects me, then I am out of this mess with letting the patent go into the Abandon heap!!! Thanks again, Russ ************ Calif, USA

Lawyer: Attorney2, Attorney replied 7 days ago

I apologize, however, Bill opted out of your question.

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Customer reply replied 2 days ago
At your convenience. However, I did try this process 2 days ago, but never received a call: My phone number is: ********** I will be sending the primary document involved. I am in a contract with a company overseas, who I believe has "Hoodwinked" me!!! They have split into two companies without my understanding, and may have tried to cut me out of my original agreement to give my USPTO Patent for use to them. They now say, that I am now part of a company 1 or the 2 that does not give me full product rights to all products, only mine. I also signed my name to documents without any text. And have never seen a document with my signature, but they believe I have signed my rights away to my USPTO Patent, except for a minor Royality and I should have 5% of the total company dividends or earnings. However the company has now breached a monthly 1k USD payment to me, authorized years ago by the Directors of this company "SWL" (Salvare Worldwide LTD). They also are no longer funding my Engineers their salaires, since June of 2017. The Breaches, in my perspective are implicit and prima-facie. So how much will it cost me to file for recension of the Contract, due to the fact that they will not acknowledge their obligations to fund this project to go to market. SECOND and Perhaps most important me is in 2018, I owe my final Patent Maintenance Fee of $3,500 to the USPTO, or it will stand Abandon. Question, do I have any obligation to notify this new consolidated company (lawfords.com) law firm, not the Engineering company I hired to do the work on refinements and contact new sales, about the fact that this Patent, that I have no money to support any further, I will be letting go of, through non-payment of my USPTO Maintenance Fees. This will terminate obviously the Patent and it will become Public Domain. If they do not re-instate their payments to my Engineers and myself, then I want to Abandon the Patent. Can they sue me in any manner. When I started this project, I formed an LLC in California, but dissolved it around 2010 or 11 when the Corporation in the UK took it on. Could they possibly sue me, and then I would have to file a BK for protection, if I Abandon the Patent? I am not wealthy and now live with my wife essentially on Social Security. I have a reverse mortgage, and what to protect my home environment. There in nothing in the document that they say I signed that specifically speaks to Abandonment of the Patent. But I have worries that between the lines of their business contract they may argue as such. If they do not re-instate their funding and seem to continue on this course of waiting 5 years to acquire my patent if we do not go to market, then I am in a fraudulent Catch22, perhaps...? I need your advice. Can I simply let a patent that I paid $38,000 USD for which breaks my heart, go, and be free of any repercustions from this company (Lawfirm). They never asked the duration of the patent which would normally expire in Jan of 2027. Would I have any liabilities? And can a BK protect my Home? Or should I re-establish my LCC and then Abandon the Patent? I am sick, as the world is clamoring for this product, but these middle-men (lawfirm) have no idea? They claim that they have spent 2.5 million pounds on this project. My engineering firm, confirms that only 1.8 in on legal record as being spent. I spent nearly 200K, in the US, before I should out these investors. Please review the document and if you would call ***************, my name is ***** ***** talk... Thanks, ***** ***** am in a hell, can't sleep and am worried... But if the law protects me, then I am out of this mess with letting the patent go into the Abandon heap!!! Thanks again, Russ ************ Calif, USA
Lawyer: Attorney2, Attorney replied 2 days ago

Bill opted out of your question. Please contact customer service and they can see if he would come back to this question for you.

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Customer reply replied 2 days ago
Salvare_IP_RWO_Licence_Execution_Version_08.15_to_JustANSWER.doc
Lawyer: Attorney2, Attorney replied 2 days ago

US / Canada 1-***-***-****

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The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

DISCLAIMER: Answers from Experts on JustAnswer are not substitutes for the advice of an attorney. JustAnswer is a public forum and questions and responses are not private or confidential or protected by the attorney-client privilege. The Expert above is not your attorney, and the response above is not legal advice. You should not read this response to propose specific action or address specific circumstances, but only to give you a sense of general principles of law that might affect the situation you describe. Application of these general principles to particular circumstances must be done by a lawyer who has spoken with you in confidence, learned all relevant information, and explored various options. Before acting on these general principles, you should hire a lawyer licensed to practice law in the jurisdiction to which your question pertains.

The responses above are from individual Experts, not JustAnswer. The site and services are provided “as is”. To view the verified credential of an Expert, click on the “Verified” symbol in the Expert’s profile. This site is not for emergency questions which should be directed immediately by telephone or in-person to qualified professionals. Please carefully read the Terms of Service (last updated February 8, 2012).

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