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<font face="Times New Roman">Carl's posts are always engrossing, and
often funny. Thank you, Carl.<br>
<br>
As to the "married" issue and patent rights, that has been an
ongoing issue from some years. <br>
<br>
Long ago, when that legal issue arose, I drafted, for corporate
use, a form to help shore a company's inventive rights of
prospective and ongoing employees of a company. This was a form
for execution by the spouse of the prospective/ongoing employee's
spouse, identifying consideration for surrendering community
rights in inchoate IP to the company, and "automatically
assigning" (per Federal Circuit, automatic assignment law) those
rights to the company upon their creation by the employee
spouse. But I do not think any of the companies I worked
implemented a practice of using that form. <br>
<br>
I have attached one version of that form. Rick<br>
<br>
<br>
<br>
<br>
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<div class="moz-cite-prefix">On 8/21/2024 6:23 AM, Carl Oppedahl via
Patentpractice wrote:<br>
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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"
moz-do-not-send="true">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>
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cite="mid:BN8PR15MB3140355FBF9A87E1CD8A357CBC8E2@BN8PR15MB3140.namprd15.prod.outlook.com">
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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
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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
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