When an owner/patentee feels the ship listing, then the IP often gets assigned, reclaimed, conveyed, etc. No specific or legal remedy can prevent this, but typically pleaded is an action for imposition of a constructive trust, as in The Compak Companies v. Johnson, 03-cv-7427 (N.D. Ill. June 1, 2009). Even if it is an available remedy, there still is a shell game to play, hoping to impose the equitable trust on the correct transferee. After 20+ pages of analysis, the court held that it would “decline the parties’ invitation to declare who owns” the patents.
After passing several opporutnities to find ‘meaning’ in recent cases about patents for subatomic combinations of matter, I took to blawing about insolvency of IP-only-asset companies as in this Compak case. It deals with “Communion Packaging,” and the patents claim containers for “wine and communion wafers.” Holy gobbledegook, Antony! But here, an intervening bankruptcy (not a moral one) affected the title to the patents for the holy vessels.
The case and claimed subject matter altogether provoked surmise about what sort of advertising or promotion was used for the patented containers. ‘We transport what you transubstantiate.’ A related curiosity was whether the ruling could be rendered without using any Latin; and, it could not: holding that a post-insolvency license was not void “ab initio.” Taking a quick look at USP #5,246,106, I was reminded of that travel cup my folks gave me for the long bus ride to summer camp – that, was unholy.
The ruling is a worthy read for those who counsel start-ups, where the patentee/owner either holds the IP personally or has licensed it to the start-up. The actions and uncertainties that can ensue when the start-up faces insolvency, and its only asset is the IP, make the case useful to consider.