Disslved company

Isaac

The dissolution of the company would not transfer any intellectual property rights to a licensee unless the license arranged for such a transfer.  

Rachel

Thank you. So, if the licence did not provide for this is there any common law position which would allow the licencee to use the IP without penalty? In the UK where a company is dissolved the IP goes back to the Crown and be purchased in certain circumstances.

Isaac

Quote

Rachel

thanks again Isaac, would we therefore need to contact the company adminstrator to establish whether the IP was assigned to one of the Directors or Members prior to the dissolution?

RL

I have a similar situation whereby the IP of a now dissolved company consisting of nearly 50 entities having invested millions was never assigned to anyone. The only thing that exists is that another company has a non-exclusive licensing agreement which also has an option to purchase the IP. However, the option was never exercised prior to the IP holding company being dissolved. My attorney (just now looking into this and I have never dealt with this attorney before) strongly suggested (given detail s/he yet has) that the IP does indeed belong to the dissolved company. Anyone comments or thoughts on this matter?

JimIvey

IP is an asset, like desks, chairs, computers, etc. owned by the dissolved company.  Most typically, all assets are sold off and any debts of the company are paid off to the extend possible.  Any leftover money is divided among the owners.  However, companies in the black tend not to dissolve, so I'm betting the company was in the red.  In that case, there would be no money to distribute among the owners.

But, most typically in this situation, the IP is sold in something closely approximating a fire sale.  

On the other hand, if the company still owns the IP and no longer exists, there's no way to enforce the IP or transfer it to another.  In essence, the IP becomes absorbed into the public domain and can be used freely by anyone.

Regards.

RL

Then it would not be wise or advised to sign a document that is back dated (prior to dissolvement of the company that developed the IP) whereby a company that has a non-exclusive license agreement would get the IP at no cost? It seems to me like the company with the non-exclusive license agreement is trying to re-write the arrangement to its benefit--without consideration or knowledge of the IP company owners--

JSonnab...

One possible scenario might be: if the licensee continues use of the licensed mark and the licensor doesn't successfully transfer the mark upon dissolution, then the licensee would become a user of the mark in its own right as of the date of dissolution.  The licensee may also be found to have an earlier date of first use (that is, prior to the dissolution) depending on the terms of the license.

- Jeff

Isaac

Some types and instances of IP more or less dissipate if the business dissolves without making other arrangements.  For example, trademarks and some types of trade secrets might vanish of their own accord once they are no longer associated with a commercial endeavor.

RL

That being the case, then it is of no benefit to do anything--that is, for me to sign a Quit Claim or a Re-Write of an Agreement that would transfer the IP to the Licensee, correct?  What concerns me about the latter part of that is that there are investors of the dissolved company who would not be aware of such re-work--and that in itself is not doing business in a transparent manner. Anyone's thoughts?