[Patentpractice] inventor address on patent assignment

Mon Nov 20 20:06:11 EST 2023

Here is the money quote:
2.9 In conclusion, the Board, applying the general rule of interpretation pursuant to Article 31 VCLT to the term "signature" in Article 72 EPC, i.e. interpreting this term in good faith according to its ordinary meaning in the applicable context and taking account of the purpose of this legal provision, holds that this term - in the absence of a different definition in the Implementing Regulations (see point 2.11 below) - must be understood as referring to a handwritten depiction of someone's name, written on the assignment "contract" referred to in Article 72 EPC. In the absence of any such handwritten signature, an assignment agreement does not comply with the formal requirements under Article 72 EPC and, under Rule 22(3) EPC, has no effect vis-à-vis the EPO. It follows from Rule 22(3) EPC that it is beyond the EPO's jurisdiction whether or not such a contract, in cases of non-compliance with the requirements of Article 72 EPC, also has no effect between the parties to the contract themselves. If necessary, this question must be decided by the competent national court according to the applicable law regulating the consequences of non-compliance with formal requirements for contracts.
I can think of one assignment right off hand that was killed by this decision. It is one of those that was signed with Adobe sign, which tracks the history of the assignment (who opened it, etc.) and shows it was signed by the person indicated. It was difficult for the client to get everyone's signatures. It's going to be a PIA to get it signed again by hand.

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Orvis via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Monday, November 20, 2023 6:00 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Orvis <orvispc at gmail.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

Thank you for sending the decision. Wow. 20 plus pages to decide if an electronic signature is really a signature. Apparently not.

Nov 20, 2023 7:45:00 PM Maureen Mazza via Patentpractice <patentpractice at oppedahl-lists.com>:

Link to the Sept 4, 2023 decision:

https://legacy.epo.org/boards-of-appeal/decisions/pdf/j230005eu1.pdf

Maureen

Maureen Mazza

Patent Agent
Bergman LLC

Intellectual Property Law

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Cambridge, MA 02140

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Fax: 781-648-8873

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Patent Lawyer via Patentpractice
Sent: Monday, November 20, 2023 6:47 PM
To: Jim Boff <jboff at atllp.co.uk>; E. Victor Indiano <vic at im-iplaw.com>; James E. Lake <jel at randalldanskin.com>; patentpractice at oppedahl-lists.com
Subject: Re: [Patentpractice] inventor address on patent assignment

Please send a link to this EPO decision requiring handwritten signatures on assignments.

Thanks.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of Jim Boff via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Reply-To: Jim Boff <jboff at atllp.co.uk<mailto:jboff at atllp.co.uk>>
Date: Monday, November 20, 2023 at 6:44 PM
To: "E. Victor Indiano" <vic at im-iplaw.com<mailto:vic at im-iplaw.com>>, "James E. Lake" <jel at randalldanskin.com<mailto:jel at randalldanskin.com>>, "patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>" <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] inventor address on patent assignment

On top of which, a recent decision of the EPO Boards of Appeal overturned a decision of the EPO President, and held that only handwritten signatures were effective on assignments, not electronic signatures.

One more poop on the pile we have to shovel.

Jim Boff

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> on behalf of E. Victor Indiano via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Sent: Monday, November 20, 2023 11:13:58 PM
To: James E. Lake <jel at randalldanskin.com<mailto:jel at randalldanskin.com>>; patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com> <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>>
Subject: Re: [Patentpractice] inventor address on patent assignment

This is the first time you've received an email from this sender. Make sure this is someone you trust.

Something else that you should be aware of is that many foreign countries require the Assignee  to also execute the assignment. This is different than the US, which only requires the assignor to execute the assignment.

Vic Indiano

The Indiano Law Group, LLC

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Direct Phone:317-927-8465

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of James E. Lake via Patentpractice
Sent: Monday, November 20, 2023 5:59 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

You will have to ask this question of each foreign associate in the states where your client may wish to file. Send them your draft assignment for review.

In my experience, it is very difficult to anticipate all of the possible informalities in a single assignment form that covers every foreign state. If you start with a proper assignment, then it should require the assignor to cooperate in preparing follow-on assignments complying to local rules. Depending on where you file, the biggest problem you may have is not enough originally-signed and notarized copies if you file in any states that are not parties to the Hague Convention on Apostilles https://www.hcch.net/en/instruments/conventions/specialised-sections/apostille<https://urldefense.proofpoint.com/v2/url?u=https-3A__www.hcch.net_en_instruments_conventions_specialised-2Dsections_apostille&d=DwMGaQ&c=euGZstcaTDllvimEN8b7jXrwqOf-v5A_CdpgnVfiiMM&r=P8C-YGsnS8Dh5nmYuabWokBy6XWFpcRpPMLQrRWSk5A&m=DT3qTLLUoGx2EUVTRxcEBkeuJ1WY3pEEEKR4Jw55tLvR-ieZKLUuiFw80TyHCw9q&s=9AvV5dgblW72w2IZyZOXsH5qMV21UElGQaAuxHzs9NU&e=> or otherwise require an original. Some states also require a special form.

That said, I generally list the assignor residence city, state, and country only and, if necessary, mailing address as their office address, often the same as the assignee (corporate) residence address. When some foreign associate assignment forms I received asked for an assignor address, I used their office mailing addresses, the same as the assignee and have not received a complaint.

James Lake

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com<mailto:patentpractice-bounces at oppedahl-lists.com>> On Behalf Of Umair A. Qadeer via Patentpractice
Sent: Sunday, November 19, 2023 8:18 AM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: Re: [Patentpractice] inventor address on patent assignment

[External Email]

Hi all,

As most of you are likely aware, the USPTO does not require the assignor's address to be provided on a patent assignment.

Are any of you aware of any foreign jurisdictions which require the residence address of the assignor to be listed, or will providing an office address suffice?

We are trying not to have to go back and cure assignments for an invention that will likely have a lot of national phase applications, but we'd rather avoid having inventor home addresses become part of the public record.

Thanks in advance!

Best,

Umair

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