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transfer of liability on company takeover

Re: transfer of liability on company takeover

Postby atticus » Thu Sep 19, 2013 3:50 pm

Doesn't the OP say that the transfer of the business and assets did take place, a year or two after the share sale?
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Re: transfer of liability on company takeover

Postby adviceseeker » Mon Oct 14, 2013 6:50 pm

dls wrote:If the shares of a are bought by company B, then a is still the employer - no direct assignment of the company's assets has occurred.


Thank you for your clarification on assignment. That appears consistent with INPADOC LEGAL status recording only ‘change of name or company name’ and ‘change of address’ around the time of takeover of A by B. ‘Transmission of property’ is not recorded under INPADOC LEGAL status until the relevant part of the business of Company B was subsequently acquired by company C in 2010/2011.

Perhaps you could comment further on the following please:

Would company B, still be considered to be “the employer “ in the context of the 1977 Patents Act notwithstanding that I left the employment of company A some 5 years prior to its takeover by B?

Would a claim against company B be limited only by the statutory 1 year limitation period from the date of abandonment/expiry of the patent or would any other limitation period apply in this case?

If the statutory one year limitation period applies would this start at the date at which company B disposed of the patent to company C?

Is it likely that a claim of this nature might be under taken on a no win no fee basis?


I have summarised the background information for convenience below:

I am considering making a claim for employee compensation under the provisions of Sections 39 – 43 of the Patents Act 1977.

The UK patent was granted to company A (my former employer) in 2000

I left the employment of company A in 2003.

In 2008 my former employer (company A) was taken over by company B and company A was delisted at that time.
INPADOC LEGAL status records change of name or company name and change of address in 2009.

In 2010 the relevant part of the business of company B together with supporting intellectual property was acquired by company C
INPADOC LEGAL status records transmission of property to company C in 2011

I have never been employed by either company B or company C.

The patent remains in force to date registered to company C
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Re: transfer of liability on company takeover

Postby atticus » Mon Oct 14, 2013 6:53 pm

INPADOC?
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Re: transfer of liability on company takeover

Postby adviceseeker » Mon Oct 14, 2013 6:59 pm

INPADOC = International Patent Documentation Center ( in this case cited from EPO worldwide legal status database)
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Re: transfer of liability on company takeover

Postby atticus » Mon Oct 14, 2013 7:03 pm

If you wish to assert a right to intellectual property, surely you assert it against the person or company purporting to own it.
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Re: transfer of liability on company takeover

Postby adviceseeker » Mon Oct 14, 2013 7:14 pm

I should probably clarify that ownership of the patent is not being disputed. Under the terms of my contract of employment ownership was transferred to Company A (my then employer). Notwithstanding such contractual obligations the 1977 Patent Act makes provision for employee compensation where "the employer" gets "outstanding benefit" from the invention, which I believe to be the case here.
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Re: transfer of liability on company takeover

Postby atticus » Mon Oct 14, 2013 7:32 pm

Are you suggesting that a company that has never employed you is to be treated as having employed you?
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Re: transfer of liability on company takeover

Postby adviceseeker » Mon Oct 14, 2013 7:59 pm

Both Company A and Company B obtained "outstanding benefit" from the invention. Both benefited from markedly increased turnover & profit arising directly from the invention. Furthermore, the relevant part of the business sold by Company B to Company C was valued largely on the worth of the invention and patent in question. What I am not clear about is whether a claim against Company B under the provisions of Sections 39 – 43 of the Patents Act 1977 would be precluded by the fact that I was employed by Company A prior to its takeover by Company B.
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Re: transfer of liability on company takeover

Postby atticus » Mon Oct 14, 2013 8:17 pm

I must confess that I am struggling to understand why a company that has never employed you, but which has acquired assets from a company that had some years earlier ceased to employ you, should be considered for any purpose to be or have been your employer.
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Re: transfer of liability on company takeover

Postby adviceseeker » Mon Oct 14, 2013 8:37 pm

My initial thinking was along those same lines. I think I need to revisit the statute to see whether there is any onus to compensate the patent inventor irrespective of the employment relationship. Thank you for all of your very helpful comments
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