Navigating Your Patent Application During Divorce

Estimated reading time: 9 minutes

Summary:

Handling a patent application during divorce adds a complex layer to an already difficult time. This article explores how your intellectual property is often viewed as a financial asset in divorce proceedings. You should care because strict patent deadlines do not pause for personal matters, and you must take specific steps to protect your invention’s value and avoid losing your rights.

Your Patent Application During Divorce: A Guide for Inventors

Divorce is a challenging life transition. It affects many aspects of your personal and financial life, including your intellectual property rights. Owning a patent application during divorce may impact their assets. Inventor’s need to know what steps to take to ensure continued protection for their invention. Keep in mind that this is general information, not legal advice, but it can help you ask the right questions.

While your family law attorney handles the legal aspects of asset division, your patent attorney provides guidance on safeguarding your intellectual property amidst these changes.

You’re Not Alone – This is a Common Story

I received a call a few months ago from a new inventor we’ll call “Alex.” He sounded worried. “I’m going through a divorce,” he explained, “and my spouse’s attorney is asking for a list of all my assets. I have a pending patent application. Do I have to disclose that?”

This is a common question. Alex’s first instinct was that the invention was his idea, separate from his marriage.

My answer, as it often is, was: “It depends, and your family law attorney is the only one who can give you the definitive answer for your situation.”

I explained that the first question we need to answer is: Who actually owns the patent application?

Alex is an engineer for a large tech company. He developed his invention as part-time work for his employer. In his case, like most employees in technical fields, he had signed an employment agreement. This agreement almost certainly included a clause assigning his rights to any inventions created during his employment to the company.

If the company owns the patent application, it is not his personal asset to be divided. It belongs to his employer.

However, I then asked if he had any other inventions, perhaps a “side hustle” project. He did. He had a second, unrelated provisional patent application for a gadget he developed in his garage. This application was filed in his own name.

“That second application,” I told him, “is very likely a personal asset. You absolutely must discuss it with your family law attorney.” That application holds potential future value, and family courts often view such assets as marital property, depending on state law. Alex’s story highlights the two most important issues: ownership and disclosure.

Is a Patent Application Marital Property?

Alex’s story leads directly to this central question. While I am a patent attorney and not a family law attorney, I can share some general insights from my experience.

In most states, assets acquired during the marriage are considered “marital property” or “community property.” This means that patent applications and issued patents are subject to division during a divorce. Assets acquired before the marriage may be “separate property.”

But what is a patent application or even an issued patent? It’s not a physical object like a house or a car. It’s an “intangible” asset. The patent application represents a potential future right to exclude others from making, using, or selling an invention. The issued patent grants the owner the right to exclude others from making, using, or selling an invention. Unless it is licensed or is otherwise generating revenue, it only has potential value.

Courts often treat pending patent applications and issued patents as assets. The key is when the invention was conceived and when the application was filed. If you developed the invention and filed the patent application during divorce or during the marriage leading up to it, a court will likely consider it marital property.

Your family law attorney will guide you. They may need to hire a valuation expert to determine what it is worth. This is a complex process, but it starts with one simple fact: you must disclose the asset’s existence.

The Critical Question of Ownership

Before you can determine if an application is a marital asset, you must determine if it’s your asset at all. As we saw with Alex, ownership is not always straightforward.

Employee Inventions

Most inventors working for a company have signed an employment agreement. These agreements typically contain an “assignment” clause. This clause legally transfers your rights in any inventions you create (related to the company’s business) to your employer. The patent application is filed in your name as the inventor, but the “Applicant” or “Assignee” is the company. In this case, the patent is the company’s property, not yours.

Personally-Owned Inventions

If you are an independent inventor, a startup founder, or developed an invention completely outside the scope of your employment, you likely own it personally. You may have filed it in your own name or under an LLC that you control. In either case, the patent application during divorce is almost certainly an asset that your family law attorney needs to know about.

What to Do: The Roles of Your Legal Team

Look at your patent application documents. Is there an “Assignment” document filed with the USPTO? Who is listed as the Applicant? If you are unsure, this is a question I, as your patent attorney, can help you answer immediately.

You will have two key partners in this process: your family law attorney and your patent attorney. Each has a distinct role.

Your Family Law Attorney’s Role

A divorce requires a full disclosure of assets. This may include intellectual property like patents and pending patent applications. When dealing with your patent application during divorce, you must consult your family law attorney. They will determine what disclosures are necessary for your specific jurisdiction. They provide clarity on how your patent rights fit into the broader financial picture of your divorce. They are your primary counsel on all matters related to asset division.

Your Patent Attorney’s Role

My role as a patent attorney is different. I cannot provide legal advice on family law matters. However, I can collaborate with your family law attorney to offer insight about an issued patent or pending application. I can explain the status of the case, what the next steps are, and the estimated costs.

Keep in mind that if patent-related questions arise during your divorce proceedings, your patent attorney must have your proper authorization. Your patent attorney cannot speak with your spouse or their family law attorney without your explicit, written consent. This is to protect your confidentiality.

Patent Deadlines Don’t Wait for Divorce

Life events can often cause delays. You may need to delay work on your patent application due to financial or personal reasons.

Unfortunately, patent applications follow strict, non-negotiable timelines. The US Patent and Trademark Office (USPTO) does not grant extensions because of a divorce.

If you are dealing with a patent application during divorce, remember this: a provisional patent application remains valid for only one year from its filing date. You must file a non-provisional (regular) patent application within this 12-month timeframe to maintain your rights.

Failure to do so results in the abandonment of your application. You will lose your patent-pending status and, critically, your “priority date,” which could permanently prevent you from getting a patent for that invention. This is true even if you are in the middle of contentious divorce proceedings.

The Risk of Re-filing a Provisional Application

Some inventors ask if they can just re-file the provisional application to get another year until their divorce settles. This is technically possible, but it is a very risky strategy. I generally do not recommend as it poses the risk of:

• Loss of Original Priority Date: Re-filing does not preserve your original filing date. Your new filing date is the date you re-file.
• Intervening Public Disclosures: What happened in that gap before you re-filed? Did you publicly disclose the invention? Did you start selling it? Any public disclosures before your new filing date can be used against you and may make your invention unpatentable.
• Intervening Filings by Others: What if a competitor filed a similar patent application during that time? With your new, later filing date, they would have priority over you. You could lose all rights to patent the invention.

Due to these serious risks, you should only consider re-filing as a last resort. You must weigh the severe potential consequences before choosing this path. You may still have to disclose this as an asset – check with your family law attorney.

A Proactive Plan: Your Next Steps

To ensure your patent rights remain protected, you need a proactive plan. Do not wait.

1. Immediately Consult Your Family Law Attorney

This is your first and most important call. Ask them specific questions:

• “Do I need to disclose my pending patent application?”
• “Based on our state’s laws, is this likely marital or separate property?”
• “What information do you need from me or my patent attorney about this application?”
• “Do we need to get a formal valuation of the application?”

2. Communicate Openly With Your Patent Attorney

Your next call is to your patent attorney. You will need to discuss the status of your application. Be prepared to explain:

• That you are in a divorce proceeding.
• The name and contact information of your family law attorney.
• If you have any court orders or agreements that might affect the patent (e.g., a “freeze” on assets).

Both of your attorneys will review your deadlines together and make a plan.

3. Make a Decision on Your Non-Provisional Application

If your provisional application is nearing its 1-year expiration, you have a hard decision to make. Filing a non-provisional application costs money. Divorce also costs money. You may feel financially strained.

However, letting the application expire could mean losing the rights to your invention altogether. You must weigh the cost of filing against the total loss of the asset. Sometimes, divorce agreements can even specify how these filing fees will be paid (e.g., from marital assets). This is another important question for your family law attorney.

4. Provide Written Authorization for Communication

If your family law attorney needs to speak with your patent attorney directly, they must have your written consent. An email is usually sufficient. This authorization allows both attorneys to discuss your case and to provide each other with factual information, such as filing dates, application status, and upcoming deadlines in both proceedings.

Conclusion & Next Steps

Divorce presents significant personal and financial challenges. Adding a patent application during divorce complicates things further. But proactive planning ensures that your valuable intellectual property remains protected. By understanding your assets, respecting the non-negotiable deadlines, and communicating clearly with both your legal teams, you can safeguard your invention.

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• Testimonials – Client Care
• Colorado Patent Attorney presents “How to protect your Intellectual Property”
• Tips on Marketing Your Invention
• How are Trademarks Important For My Business
• In The News – Trenner Law Article in ColoradoBiz Magazine