[E-trademarks] Prospective Assignments

Wed Jan 8 12:46:21 UTC 2025

I agree with all of the above --
    -- a *present* assignment of a *future invention* is just fine.  Every
employee agreement oughtta do so.  Every assignment doc should include "all
continuations in part" in the laundry list of what's assigned. *SiRF
Technology, Inc. v. International Trade Commission*, 601 F.3d 1319, 1326,
94 USPQ2d 1607, ___ (Fed. Cir. 2010) (an employee agreement using the words
“[t]he Employee assigns all of his or her right, interest, or title in any
Invention to the Employer to the extent allowed by law” including “all
inventions ... which are related to or useful in the business of the
Employer ... and which were ... conceived ... during the period of the
Employee’s employment, whether or not in the course of the Employee's
employment” acted as an automatic assignment of future inventions); *Regents
of the University of New Mexico v. Knight*, 321 F.3d 1111, 1119–20, 66
USPQ2d 1001, 1007–08 (Fed. Cir. 2003) (personnel policy); *University of
West Virginia, Board of Trustees v. VanVoorhies*, 278 F.3d 1288, 1297, 61
USPQ2d 1449, 1455 (Fed. Cir. 2002) (assignment); see also cases cited in
footnote 736; *but see Israel Bio-Engineering Project v. Amgen Inc.*, 475
F.3d 1256, 1267, 81 USPQ2d 1558, 1567–68 (Fed. Cir. 2007) (agreement was
insufficient to transfer future inventions).
    -- *future *assignment (a post-dated check) is asking for trouble

On Tue, Jan 7, 2025 at 6:33 PM Gerry J. Elman via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Well on the patent side of things, while in law school, I would have
> thought that one couldn’t enter into a valid contract that would
> automatically, without more, assign ownership of a patentable invention
> that’s yet to be made.  That is, until I read the case of *Stanford
> University v. Roche Molecular Systems, Inc.*, 563 U.S. 776 (2011), wherein
> a confidentiality agreement of Cetus Corporation with a consultant included
> a recitation that the consultant “hereby assigns” rights to future
> inventions arising from the consultation. (Cetus was eventually acquired by
> Roche.)  Although the consultant was also a faculty member at Stanford
> University and had agreed to assign to Stanford inventions made in the
> future, somehow the courts confirmed that the “hereby assigns” language in
> the Cetus agreement trumps Stanford’s  “agree to assign” language.  See
> https://en.wikipedia.org/wiki/Stanford_University_v._Roche_Molecular_Systems,_Inc.
>
>
>
>
>
>
> -Gerry
>
> Gerry J. Elman, J.D.
>
> *E**lman **IP*
>
> *Intellectual Property Matters*
>
> 6117 St. James Place, Denton, TX 76210
>
> 610-892-9942   www.elman.com
>
>
>
>
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Laura Geyer via E-trademarks
> *Sent:* Tuesday, January 7, 2025 4:59 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Laura Geyer <lgeyer at ndgallilaw.com>; voyer at keganlaw.com <
> daniel at keganlaw.com>
> *Subject:* Re: [E-trademarks] Prospective Assignments
>
>
>
> Well, since “tunc” just means “then”, I’d say we have a nunc pro tunc,
> it’s just the “tunc” is a future “then”. Just for laughs, I just pretend
> went through the first few steps of the process for an assignment “nunc pro
> tunc”. So, I can confirm that the date can’t be in the future for a “nunc
> pro tunc” with a future effective date.
>
>
>
>
>
> I think you can file for recordation almost anything (even if it is really
> a non-right) under whatever is closest to the “misc” category, if you don’t
> have to state an effective date (like, I think the regular assignment you
> just enter the execution date). But why would you record something like
> this? Speaking as someone who’s done a lot of IP side due diligence, a
> non-assignment recorded as an assignment really could throw a spanner into
> the works – it seems to me that it’s fundamentally misleading (even if
> permissible) to record an interest that isn’t an interest yet and may never
> be. Even though interests in trademarks are not perfected at the PTO, it
> still serves a key “notice” function.
>
>
>
> Just thinking out loud!
>
>
>
> *Laura Talley Geyer* | *Of Counsel*
>
>
>
> *ND Galli Law LLC*
>
> 1200 G Street, N.W., Ste 800
>
> Washington, DC 20005
>
> Tel: (202) 599-9019 (direct)
>
> https://ndgallilaw.com/laura-geyer/
>
> https://ndgallilaw.com/
>
>
>
> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *Welch, John L. via E-trademarks
> *Sent:* Tuesday, January 7, 2025 1:45 PM
> *To:* For trademark practitioners. This is not for laypersons to seek
> legal advice. <e-trademarks at oppedahl-lists.com>
> *Cc:* Welch, John L. <John.Welch at WolfGreenfield.com>; voyer at keganlaw.com <
> daniel at keganlaw.com>
> *Subject:* Re: [E-trademarks] Prospective Assignments
>
>
>
> *EXTERNAL EMAIL*
>
> Would you call it “nunc pro futurum”?
>
> I agree with Carl.
>
> Would the USPTO record it? Once you put in the effective date in the
> recordation cover sheet, I think it would be kicked out.
>
> JLW
>
>
>
>
>
>
>
>
>
> *John L. Welch*
>
> *Senior Counsel*
>
> Admitted to Practice: Massachusetts, New York, and Washington, DC
>
> jwelch at WolfGreenfield.com
>
> Tel. 617.646.8285
>
> <http://thettablog.blogspot.com/>
>
> *Wolf, Greenfield & Sacks, P.C.*
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> *From:* E-trademarks <e-trademarks-bounces at oppedahl-lists.com> *On Behalf
> Of *voyer--- via E-trademarks
> *Sent:* Tuesday, January 7, 2025 1:31 PM
> *To:* Oppedahl Carl <e-trademarks at oppedahl-lists.com>
> *Cc:* voyer at keganlaw.com <daniel at keganlaw.com>
> *Subject:* Re: [E-trademarks] Prospective Assignments
>
>
>
> Seems an “asssignment” as of a future date is a promise to assign, not an
> actual assignment.
>
> Losts can happen before then. Death, change of mind, assignment to
> another. There might be
>
> an action for breach of promise, but thee contingent assignee won’t have a
> confirmed property interest
>
> by the earlier document.
>
> Daniel Kegan
>
> Kennett Sq PA
>
>
>
> On Jan 7, 2025, at 12:44 PM, Janice Housey via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
> All--
>
> I have recorded many *nunc pro tunc* assignments over the years but is it
> possible to record a PROSPECTIVE assignment e.g., a typical assignment
> document but with the effective date being in the future?  Any other issues
> beyond recordation?  It does not seem like "best practice" maybe—  but are
> there any legal/USPTO problems with doing so?
>
>
>
>
>
> *Janice Housey*
>
> Litmus Law PLLC
> 4 Weems Lane #240
> Winchester, Virginia 22601
>
> 703.957.5274 office
> 703.851.6737 cell
>
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