[E-trademarks] Prospective Assignments

Wed Jan 8 12:52:45 UTC 2025

In other words, the *signature date* must be truthful.

Every corporate M&A asset deal has tons of future assignments.  There will
be dozens of them.   At signature date, the Asset Transfer Agreement says

"Effective on closing [typically a few weeks to a few months in the future,
depending on complexity and regulatory approval], [target] assigns to
[acquiror] all [patents, marks, etc]

Then the one-pager assignment signed at closing restates the assignment and
that's what gets recorded.

On Wed, Jan 8, 2025 at 7:46 AM David Boundy <DavidBoundyEsq at gmail.com>
wrote:

> 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.*
>>
>> BOSTON | NEW YORK | WASHINGTON DC
>>
>>
>>
>> wolfgreenfield.com <https://www.wolfgreenfield.com/>
>> <https://www.linkedin.com/company/wolf-greenfield/>
>> <https://twitter.com/wolfgreenfield>
>>
>> *Please consider the environment before printing this email.*
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>>
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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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>>
>>
>>
>>
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>
>
> --
>
>
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>
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