[Ip-transactions] [Patentpractice] Questions about assignment language and consequences

[David Boundy]

On these facts (with no more information), and assuming other national law
tracks U.S. law (or that assignment of rights in country x is determined on
lexi loci of where the assignment was done -- Horphag case), then I think
ownership has split.

On Fri, Mar 8, 2024, 2:22 PM Patent Lawyer via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> I have some questions about assignment language and its consequences.
>
>
>
> Thanks in advance for any input.
>
>
>
> ====
>
> Company AAA has a US Patent (P1), based on a patent application (A1)
> [i.e., application A1 issued as patent P1]
>
>
>
> Company AAA filed a PCT application claiming priority to A1.
>
>
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> The PCT application was timely filed.
>
>
>
> After application A1 issued (as patent P1), but *while the PCT
> application was still pending* (alive), Company AAA assigned the US
> Patent (P1) to Company BBB.
>
>
>
> The assignment stated, in full:
>
>
>
> *"Company AAA hereby assigns all right, title, and interest in Patent P1
> to Company BBB."*
>
>
>
> Questions:
>
>
>
>    1. What is actually meant by each word of the phrase "*right, title,
>    and interest*"?
>
>
>
>    1. Does this assignment give Company BBB any rights in the PCT
>    application, if not explicitly, then at least by implication?
>
>
>
>    1. Does this assignment give Company BBB any rights in any national
>    phase applications based on the PCT application, again, if not explicitly,
>    then at least by implication?
>
>
>
>    1. Does your answer to question #3 depend on whether those national
>    phase applications were filed before or after the assignment?
>
>
>
>
>
> Again, thanks in advance for any input.
>
>
>
>
> --
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>
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>
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