[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.  BBB owns U.S. patent P1 and AAA retains all rights
flowing from the PCT.   Under U.S. law, BBB has nothing by implication.
Keep in mind that assignment of any of the 160-whatever Whateverovia
daughters of the PCT may be governed by Whateverovian law, which may be
different.  Each country may have a different choice of law rule!

On Fri, Mar 8, 2024 at 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.
>
>
>
> 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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