Spin off and parent patent

[w***@aol.com]

I am contemplating on creating a spin off company from a parent
company. I would also like to entirely include the child patent
(pending) of a parent patent owned by the parent company together with
the spin off. All the work related to intellectual property will
entirely be the responsibility of the child company.

The child patent has an independent claim (IC) that could potentially
stand on its own, as well as a dependent claim (DC) which is the
concept borrowed from its parent patent - owned by the parent
company. If it can not stand on its own, it may need to make use of
the concept extended from its parent. For example:

parent patent - claim Parent_IC
child patent - claim Child_IC & Child_DC
where Child_DC == Parent_IC

Does the child patent automatically has rights to the claim extended
from its parent, i.e. Child_DC (Parent_IC), without any obligation to
the parent patent just because it is its parent? In other words, who
owns the Child_DC (Parent_IC) in the context of the child patent?

Thank you in advance ...

[d***@practical.org]

Post by w***@aol.com
I am contemplating on creating a spin off company from a parent
company. I would also like to entirely include the child patent
(pending) of a parent patent owned by the parent company together
with the spin off. All the work related to intellectual property will
entirely be the responsibility of the child company.
The child patent has an independent claim (IC) that could potentially
stand on its own, as well as a dependent claim (DC) which is the
concept borrowed from its parent patent - owned by the parent
company. If it can not stand on its own, it may need to make use of
the concept extended from its parent. ....
...... ....
Does the child patent automatically has rights to the claim extended
from its parent, i.e. Child_DC (Parent_IC), without any obligation to
the parent patent just because it is its parent? In other words, who
owns the Child_DC (Parent_IC) in the context of the child patent?

You seem unaware that these questions include not clearly
articulated yet glaring assumptions which, if what you say in your
first paragraph is so, potentially inject unnecessary because
extraneous considerations, virtual invitations to later conflict,
about whatever now is and later will be the relationship between
parent company and spun off child company.

In other words, assuming that it is necessary or even
important to analyze and predict what is or not "automatically" so in
effect conflates what will be so by reason of the parties' contract
with what may or will be so if the parties have not agreed what, for
them, the answers to your questions shall be and later dispute to the
point of fighting about what the answers shall be.

But just as first suggest above that there will be a agreement
between the parent and spin off companies that the work related to
intellectual property in relation to whatever patent rights the spin
off will have acquired from the parent company will be the sole
responsibility of the spin off company, the parties can agree in
advance if they so decide about whether and, if so, to what extent and
on what patent ownership or license or other assignment and on what
financial and other terms the spin off company shall be permitted to
use concepts borrowed from the parent patent which would still be
owned by the parent company, and so on.

In other words, you appear to pose less a question about what
arguably is and is not "automatically" so in patent law terms when the
interested parties have not agreed and do not agree and more, or, if
those parties so agree, entirely a question of contract negotiation
and drafting.

[w***@aol.com]

        You seem unaware that these questions include not clearly
articulated yet glaring assumptions which, if what you say in your
first paragraph is so, potentially inject unnecessary because
extraneous considerations, virtual invitations to later conflict,
...
        In other words, you appear to pose less a question about what
arguably is and is not "automatically" so in patent law terms when the
interested parties have not agreed and do not agree and more, or, if
those parties so agree, entirely a question of contract negotiation
and drafting.

I think the best way to do this is to assume that the child patent
will be able to stand on its own, in fact it is very likely, but put a
precautionary statement expressing that any features belonging to
other patents will be resolved in accordance with the applicable laws
and regulations. That should be enough of an incentive for the spun
off company that will have exclusive ownership of the child patent to
make every possible effort to make it stand on its own.