Question:
We are not immortal. Unfortunately, my dad passed away, and I have two of his patents. I’m not sure what to do with them. This is part of what can get into estate planning, where patents intersect with other areas of law.
Yep. So, I’ll put this up here. He’s a bit older, and I want to see what routes he can take. My grandparents recently moved in, and I inherited some things. Upon discussion, I found it was discussed with Chrysler at the time. That’s pretty cool. There need to be some modifications done to it, which we already suspected. Because of his health, it hit the back burner and never saw release.
Answer:
JD: Okay, well, a couple of things there. Typically, if he’s an employee of Chrysler, I would guess that the patent is actually owned by Chrysler. But if he was just in conversation as an individual, private individual, sole proprietor, or an LLC, potentially discussing a licensing deal or a sale of his patent portfolio to Chrysler, then I think you do have rights to consider.
JD: First and foremost, getting with a patent attorney to make sure the patents are still enforceable is important before going any further. See how much life is left on those patents. Assuming there is some life left, you would want to have proper assignments done. There are mechanisms in the Manual of Patent Examining Procedure (MPEP) for doing just that for deceased inventors. Usually, it will follow the will or intestate succession. Assuming you are the heir, you’ll get ownership, and the patent will be assigned and recorded, giving you full authority just as if you were the inventor.
Matt: I’m actually dealing with this right now with a trademark client. I’ve never had to do it before, but I’m assuming we will have to wait for the estate to go through probate. Then, his son will become the executor of his will, and at that point, we can assign it.
JD: What’s cool about trademarks is there’s no expiration, as long as the business exists.
Matt: We wouldn’t want it to be abandoned. The sooner we can get the assignment, the better. You don’t want to have an LLC that’s out of business or an individual owner who’s deceased on record as the owner. We want to make sure that trademark is active and enforceable.
JD: Even if you have other things going on in your life and are too busy or don’t have the same enthusiasm for the invention, you can sell the patents. Patents are fully transferable. You can sell them, license them, and get them into the hands of other individuals or business owners who can fulfill your father’s dream by getting it out into the world.