Informal Partner's Rights to Intellectual Property

[benjamin3]

Hi there, I'm based in California. 3 years ago me, Bob and Alice started writing a software patent which was initially Bob's and Alice's idea. Neither Bob nor Alice have software background - I do. Over the course of writing I introduced many solutions and I designed whole system. My name was never introduced to the patent as an author as I joined "only to help". Patent got filed with USPTO, currently it's pending.

I was promised that my equity will be reflected in the partnership agreement accordingly and that patent will be reassigned to the partnership. However, Bob left this whole project in the middle as he didn't want to contribute financially and work long hours.

After Bob left, me and Alice filed extra 2 patents as a continuation of the first one. Our patent attorney recommended to keep the authors unchanged as it gets easier to get granted that way. Bob promissed that he will assign extra 2 patents to the partnership after we file.

Obviously he didn't.

We have partnership draft but Bob doesn't want to sign it. As a result all of the patents are in the name of Bob and Alice and there is no official partnership signed.

Where I am currently with it
- I spent $10,000 on first patent
- I spent $15,000 on following two patents; Bob spent no money and no work on these two patents
- I authored most of the content of all patents as they are software patents and I'm the only software person on the team yet my name is not listed there

Bob won't sign the partnership and he won't reassign patents to the partnership as previously agreed.

I'm considering moving on and leaving this whole project. All I want is that $25,000 back from Bob, this is the money I paid mostly towards patent attorney and USPTO fees.

What are my options?

[Mr. Knowitall]

Should we infer that Bob denies that any such agreement existed? If so, you will need to discuss your circumstances in detail with a lawyer to determine your rights, as well as what you can prove. If you have a good paper trail (including a trail of digital communication) showing that the partnership exists and that the partnership was to own the patents, then you're in much better shape than if you don't have a paper trail and Bob denies your claims.

[pg1067]

You can sue.

You can walk away.

Lots of other options, but those are the two most obvious, and it's hard to believe you didn't know those things.

[benjamin3]

Should we infer that Bob denies that any such agreement existed? If so, you will need to discuss your circumstances in detail with a lawyer to determine your rights, as well as what you can prove. If you have a good paper trail (including a trail of digital communication) showing that the partnership exists and that the partnership was to own the patents, then you're in much better shape than if you don't have a paper trail and Bob denies your claims.

Bob doesn't deny agreement existed. Alice has over 50% of equity and Bob has less. He doesn't want to sign partnership as he is afraid that Alice will 'screw him over'. It's been over 6 months asking Bob to sign but his not willing to cooperate. He would sign only if he had control over partnership which is not going to happen. Also, at some point Bob said he was 'satisfied with the partnership' and he was willing to sign, but then he changed his mind.

I'm especially focused on the last 2 patents where it was clearly communicated to Bob that a) me & Alice cover all patent costs, b) we keep Bob's name only because "it's easier to get granted that way", c) Bob said he would assign patents to the partnership - yet he is not doing it. In my opinion he is clearly holding onto property that doesn't belong to him.

I don't know much about law in US. I've heard about small court claims. I don't mind suing but how do I go about it then so it makes sense? What specialist should I talk to, what kind of court, what kind of lawsuit?