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<p>Yes I have had such questions from foreign associates a dozen
times in the past thirty years, and I am always troubled by it.</p>
<p>Indeed think how this kind of project could blow up. One reason
it could blow up is that what is often at least implied in such a
question is a hope that somehow you are smarter than anybody
anywhere in the world, because you somehow know what ten or twenty
sets of "magic words" need to be inserted into a proposed
Assignment that would make it legally enforceable in the whole
world, in every country of the world.</p>
<p>We already know this cannot possibly be within the abilities of
any particular single practitioner, no matter how smart they are.
I am told by some European practitioners that one of the
requirements for an Assignment to work in some European countries
is, the document is required to be signed not only by the Assignor
but also by the Assignee. I am also told that in some European
countries, the mere fact of the inventor drawing paychecks from an
employer might mean the rights are not owned by the inventor. In
which case maybe if someone were to stick a would-be Assignment
under the nose of the inventor to sign might not lead to any
rights being assigned because the inventor has no rights to
assign.<br>
</p>
<p> I am told by some Japanese practitioners that in Japan, even if
an American-style assignment were to be signed by a Japanese
inventor, it probably does not settle the question of who owns
what, because there are laws about how much compensation needs to
be paid to the inventor. <br>
</p>
<p>Just within the US, we have questions that might make for a
surprise about who owns what, questions that are state-specific
within our 50 states. In California there have been cases where
it made a difference whether or not the inventor was married at
the time the invention was made. I am absolutely sure that I lack
competency to give legal advice in Louisiana not only because I am
not admitted to practice there, but because that law is based not
on US common law but instead is based upon the Napoleonic Code.
There is some word "usufruct" that absolutely means something
super important about property rights in Louisiana (see
<a class="moz-txt-link-freetext" href="https://en.wikipedia.org/wiki/Usufruct#Louisiana">https://en.wikipedia.org/wiki/Usufruct#Louisiana</a> ) but that does
not arise in 48 other states. Whatever "usufruct" means legally
in Louisiana, I lack competence to say whether it does or does not
apply in any particular would-be patent assignment <br>
</p>
<p>Think of the Assignments that we have all seen over the years,
where the drafter of the document larded it with language
requiring the hapless inventor to make lots of representations and
warranties that the inventor owned all rights, and was of sound
mind, and had consulted counsel, and was delivering good title,
and conveyed it all to the Assignee. <br>
</p>
<p>Think of the Assignments we have seen where the document fails to
recite any consideration. Recall that in law school we were
taught that depending on what jurisdiction we are drafting to
meet, maybe it is required to recite consideration. Maybe we need
to recite at least One Dollar? A peppercorn? Think of the
Assignments we have seen where the hapless inventor is being
required to make a party admission that the (unspecified)
consideration is "good and sufficient". <br>
</p>
<p>Now maybe your request from the FA is narrower. Maybe they are
only asking you to draft up a document that conveys "the US patent
rights" or "the US designation from the PCT application". Even
then there are things to go wrong. We have our fifty-states issue
for one thing. And even a document which superficially seems to
assign only US rights will often have some word-creep that sort of
purports to assign "the invention set forth in" or "the
invention", which sounds a lot like assigning "everything"
regardless of geography.</p>
<p>Sometimes I sort of give up and draft up something that is a mere
quitclaim deed. A document which, correctly understood and
interpreted, amounts to nothing more than "who knows whether or
not I have any rights in the US, but to the extent that I do, I
hereby convey them". Again is a peppercorn enough? One US
dollar? An unspecified "good and sufficient consideration"?</p>
<p>One of the nice anecdotes in "Surely you're joking, Mr. Feinman"
is the place where somebody demanded he sign some patent
assignment at Los Alamos, and it said he was being paid one
dollar, and he said he would only sign if he actually were to
receive the dollar. And of course the government bureaucracy and
paperwork to carry out the payment of the one dollar took weeks or
months to satisfy.</p>
<p>In the "Oppenheimer" movie there is the half-a-second bit of
film, a throwaway quick action cut, that shows a fellow slapping
away on bongo drums shortly after the big test explosion in New
Mexico. That's a true story and it was Feinman.</p>
<p>Anyway, yes, I don't even think I could draft a document that I
could promise would work in all fifty of the United States. If I
don't think I could do that, how could I possibly add to the mix
the need to deal with whatever is different about the law when you
get to foreign countries?</p>
<p>I was born in a place in New Mexico that is walking distance from
the place where that first big test happened. Thank goodness it
was more than a decade later than the test. But occasionally a
friend or relative will ask whether this geography somehow
explains one or another of my personality quirks.<br>
</p>
<div class="moz-cite-prefix">On 8/20/2024 7:51 PM, Katherine Koenig
via Patentpractice wrote:<br>
</div>
<blockquote type="cite"
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<p class="MsoNormal">Hi everyone, <o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal">A FA has asked me to file the US National
Phase application of a PCT application (RO/GB, with two GB
priority applications). They\u2019ve also asked me to send an
Assignment of the US application for signature.
<o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal">My brain is hanging up on this for some
reason \u2013 does it make sense (would it be unauthorized
practice) for me to send them a US assignment of a US patent
application, if the applicant and inventor are both in the
UK? Would the contract be governed by UK law, and therefore I
couldn\u2019t prepare it for them? I\u2019ve asked the FA for a copy of
any assignment that\u2019s already been made, but I\u2019ve so far only
received the request to prepare one for the US. If they\u2019re
unable to send me prior assignment(s), would a better approach
be to prepare a confirmatory assignment (but what if I don\u2019t
know the terms of prior assignment(s))? <o:p></o:p></p>
<p class="MsoNormal"><o:p> </o:p></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Best
regards,<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black"><o:p> </o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Katherine<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black"><o:p> </o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Dr.
Katherine Koenig<o:p></o:p></span></p>
<p class="MsoNormal"><i><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Registered
Patent Attorney<o:p></o:p></span></i></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Koenig
IP Works, PLLC<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">2208
Mariner Dr.<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">Fort
Lauderdale, FL 33316<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black">(954)
903-1699<o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black"><a
href="mailto:katherine@koenigipworks.com"
moz-do-not-send="true"><span style="color:blue">katherine@koenigipworks.com</span></a><o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:12.0pt;font-family:"Corbel",sans-serif;color:black"><o:p> </o:p></span></p>
<p class="MsoNormal"><span style="font-size:12.0pt;color:black"><img
style="width:1.6041in;height:.427in" id="Picture_x0020_2"
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width="154" height="41" border="0"></span><span
style="font-size:12.0pt;font-family:"Calibri",sans-serif;color:black"><o:p></o:p></span></p>
<p class="MsoNormal"><i><span
style="font-size:9.0pt;font-family:"Candara",sans-serif;color:black">Targeted
Intellectual Property Strategy</span></i><span
style="font-size:9.0pt;font-family:"Candara",sans-serif;color:black"><o:p></o:p></span></p>
<p class="MsoNormal"><span
style="font-size:9.0pt;font-family:"Candara",sans-serif;color:black"><o:p> </o:p></span></p>
<p class="MsoNormal"><i><span
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<p class="MsoNormal"><o:p> </o:p></p>
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